Border Measures book: special offer to jiplp blog readers

JIPLP contributor Olivier Vrins and editorial board member Marius Schneider have edited the second edition of their encyclopaedic Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, to which JIPLP editor Jeremy Phillips has also contributed a chapter. With getting on for 1,200 pages, this weighty tome is expected to be on sale during the first half of next year.

 According to the publishers, Oxford University Press (OUP),
" ... Providing a practical analysis of anti-counterfeiting and anti-piracy measures at the borders of the European Union, this book deals with all aspects of border measures under Regulation (EC) 1383/2003. It includes a thorough description of the implementation of the regime and also looks at areas of national law, giving a coherent and comprehensive overview of the application of the border measures regime within the European Union.

Fully updated in the second edition to include the two more recent Member States of Bulgaria and Romania, the work provides important guidance for intellectual property rights-holders on the practical application of border measures in these two Member States. Coverage of the legislation and guidance is also updated to include commentary on Commission Regulation 1172/2007, which created a new application for action form for the applications based on a "Community right", as well as the DG TAXUD manual for filing applications for action under Regulation 1381/2003. Updates to case law include important recent decisions in relation to goods in transit, sanctions against traffickers when a case has been settled under the simplified procedure, Community applications for action, and the ECJ's Advocate-General's opinion on the use of information provided to an intellectual property rights-holder during a border seizure of goods.This second edition also considers the UK HMRC's fundamental changes to its detention and seizure procedures in respect of goods infringing trade mark and copyright.

New material includes a new stakeholder mapping section explaining the respective roles of the many international organisations that are active in the enforcement of intellectual property rights such as WIPO, WCO, WHO, OLAF, EUROPOL, and INTERPOL as well as a new chapter on organized crime in light of its increasing occurrence within counterfeiting networks".
This work is priced at £225. However, OUP is offering a 20% discount to readers of the jiplp weblog as well as to those attending the forthcoming JIPLP seminar on Fakes in Transit (details here).  To avail yourself of the 20% discount, quote promotion code ALSCHN11 if ordering directly by phone to +44 (0) 1536 452640 or via the book's web page at http://ukcatalogue.oup.com/product/9780199692934.do

JIPLP goes green for 2012

For 2012, JIPLP's cover
colour is this very
distinguished green
The January 2012 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available in full online. Subscribers to the online version of the journal can read it in full; everyone can read the contents here -- and access to individual features can be purchased on a pay-per-view basis. The editorial for this issue can be read in full here:
"Open minds, open innovation 
Not so many years ago, the term “open innovation” was unknown to the intellectual property community. While the concept existed, there was little evidence that it existed, or that it was likely to gain any currency at all, before the publication in 2003 of Henry Chesburgh's Open Innovation: The new imperative for creating and profiting from technology. Since then, the term has gained momentum in common parlance. However it is only in the past year or two that open innovation is becoming something that is more widely and positively spoken of as something which a business might participate in, rather than as something rather strange and risky, to be indulged in by others — preferably in North America and the Asia-Pacific.

What exactly is open innovation? According to Henry Chesburgh, it is a paradigm that assumes that businesses both can and should use external ideas as well as internal ideas, and internal and external paths to market, when seeking to advance their technology. Since the boundaries between a business and its environment have become more permeable, it is increasingly for innovations to flow both inwards and outwards. In a world of widely distributed knowledge, no-one can afford to rely entirely on their own research: it makes better sense to buy or take a licence from other companies. In terms of outward flow, internal innovations which a business owns but doesn't use should be licensed out or shared through joint ventures or spin-offs.

As a way of doing things, this is not exactly rocket science and has been around for a long time. However, in the past this approach has generally been Plan B, when the preferred option of growing, protecting and monopolising one's own innovation needs to the point of self-sufficiency could not be achieved. The importance of Chesburgh's contribution is in the paradigm shift in corporate thinking: open innovation is portrayed as Plan A, the ideal option which both reduces R&D costs and focuses them more efficiently, which leads to improved quality and more consumer choice, and which is not merely open in the inward-outward sense but which encourages greater transparency of licensed technology itself.

It seems to me that one of the most interesting potential effects of open innovation is to shift the balance of importance as between different intellectual property rights. A closed innovation model places the greatest emphasis upon control of intellectual assets by a single proprietor: the exclusionary role of patents for inventions and, to a lesser extent, statutory design monopolies, are valuable tools for achieving this end, as is the role played by contract and general legal principles regarding the protection of trade secrets such as manufacturing know-how. With control of a market secured by such means, the role of the trade mark is relatively small. This is because a trade mark is not generally capable of excluding a product or a technology from the market: all it can do is to prevent its commercial exploitation under a particular name or origin-identifier.

Once open innovation is practised, the inevitable consensual sharing of technology diminishes the importance of the most exclusionary monopoly rights. Given the typical effects of open innovation such as the development of products and processes for an entire market rather than for a specific manufacturer, competing products will increasingly use the same parts and accessories, will operate in the same manner and will therefore decreasingly compete in terms of proprietary features which are difficult for the consumer to compare. At this point, the trade mark assumes a far greater importance since it is the one statutory right over which a business—even if it chooses to share its use through licensing or franchising—cannot afford to lose control. It is also the one intellectual property right which is capable of both storing and growing any goodwill which its owner attracts, thus enhancing a business's value".

If open innovation hasn't reached you yet, there's a good chance that it soon will. And when it does, be sure to keep an open mind when you assess its benefits".

Terminus appeal hits the buffers

Earlier this year, JIPLP published a Current Intelligence note by Thorsten Lauterbach, "Copyright: A narrow defeat is still a defeat: integrity clipped before its best-before date" (Journal of Intellectual Property Law & Practice (2011) 6(6): 371-373; doi:10.1093/jiplp/jpr024). According to the abstract:
"The Stuttgart Higher Regional Court in Germany, balancing the right of integrity under copyright attributed to the architect of a work of architecture and the right to property held by the owner of the building, recently found against the grandson of Paul Bonatz, the architect of the Stuttgart terminus rail station and in favour of Deutsche Bahn AG, which sought to demolish part of that station during the construction of a new underground station.".
Thorsten has just informed us of the latest news in this dispute:
"You may recall my short comment on the author’s rights dispute revolving around the Stuttgart terminus station. Well, on 9 November the last word has now been spoken by the Federal Court of Justice (Bundesgerichtshof).

The Stuttgart 21 project (turning the railway terminus into an underground through station) had led to an author’s rights dispute between the owner of the terminus station and buildings, Deutsche Bahn AG, and the grandson of Paul Bonatz, one of the author-architects of the terminus building. The project required the destruction of both side wings of the terminus, as well as the grand staircase leading to the station hall. The author’s grandson, Peter Dübbers, sought to protect the author personality rights of his grandfather which he regarded as violated by the partial destruction of the original building. The remedies he pursued with this action were reconstruction of the north-west wing, and cessation of the imminent destruction of the south-east wing and the grand staircase (for a more detailed treatment of the legal arguments, see my earlier Current Intelligence note). 
Having lost in both instances, the last throw of the dice was an appeal against denial of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Court, since the Stuttgart Higher Regional Court (Oberlandesgericht) had refused leave to appeal. 
On 9 November the Federal Court confirmed the decision by the Higher Regional Court and dismissed the appeal by Mr Dübbers. An appeal to the Federal Court would only have been in order if the legal issue was of fundamental significance, or if a decision was necessary in order to develop or ensure consistency of the law. The decision of the lower court was regarded as free from errors of law; in addition, it did not raise issues which had not been dealt with sufficiently by prior Federal Court jurisprudence. Accordingly Mr Dübbers’s case was without legal foundation. In Dübbers’ view the case did indeed raise a fundamental legal issue, namely in respect of the significance – and arguably the gradual lessening the value – of author’s personality rights. However, the Federal Court did not agree. 
This brings an end to the legal action. It follows the political decision taken by the people of Baden-Württemberg on 27 November in a rare referendum to continue with this polarising project".
Addendum: Thorsten has now provided a link to the decision (Az. I ZR 216/10, in German) of the Federal Court, which you can read here.  If you prefer it, there is also a shorter press notice (No. 186/11, also in German) here.

Books for review

Here are three newly published books, which need suitably qualified reviewers for JIPLP.  If you would like to review one, please email Sarah Harris at sarah.harris@oup.com by not later than Thursday 15 December and let her know why you think you should be the reviewer.


Copyright And The Public Interest In China

By Guan H. Tang, Shanghai University of Finance and Economics, China)

November 2011 304 pp Hardback 978 0 85793 106 1
Hardback £79.95 online price £71.96.
Details of this book can be found here.

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Intellectual Property, Pharmaceuticals And Public Health: Access to Drugs in Developing Countries

Edited by Kenneth C. Shadlen, London School of Economics and Political Science, UK, Samira Guennif, Université Paris 13, France, Alenka Guzmán, Autonomous Metropolitan University-Iztapalapa, Mexico and N. Lalitha, Gujarat Institute of Development Research, India).

November 2011 352 pp Hardback 978 1 84980 014 3
Hardback £85.00 online price £76.50
Further details of this book can be found here.

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Die europäische Patentanmeldung und der PCT in Frage und Antwort

By Gerard Weiss and Wilhem Ungler

8. Auflage 2011. 478 Seite(n), gebunden.
ISBN 978-3-452-26819-8. sofort lieferbar EUR 118,00
Further details of this book can be found here

The Marmite Election

This year's Christmas special is "The Marmite Election" by Christopher Wadlow (Professor of Law, UEA Law School at the University of East Anglia in Norwich, UK, and a member of the editorial board of JIPLP). As the abstract explains:
Marmite (for those who do not know it) is a yeast-based condiment which, in the UK at least, is frequently used as a spread for toast or sandwiches. The advertising slogan, ‘Marmite: You either love it or hate it’ encapsulates the strongly differentiated responses which its unique taste provokes. 
For the 2010 UK general election, Marmite's proprietors, Unilever, ran a fictitious televised election campaign of their own, between imaginary ‘Love’ and ‘Hate’ parties. Perhaps in response to this, or perhaps in retaliation for being identified with the Hate Party, the British National Party apparently formed the intention of transmitting a party election broadcast in which the party leader, Nick Griffin, would have addressed his audience with a large image of a jar of Marmite floating above his right shoulder. Unilever objected, and an interim injunction was ordered to prevent the broadcast being transmitted in this form. 

This article comments upon the decision by which Arnold J banned the BNP from using the name and imagery of this popular, but controversial, food condiment; and its legal basis in terms of trade mark infringement, copyright infringement, and passing-off. It concludes by briefly comparing the legal protection accorded to a branded decoction of brewers' dregs to that claimed, with considerably less success, for other ‘intellectual properties’, living and dead, whose owners had cause to complain that their names, words, or images were appropriated for political purposes in the course of the 2010 General Election.
As a goodwill gesture, this splendidly researched and beautifully executed piece is freely available to everyone who visits this site. You can access it in html and pdf formats. Enjoy!

British court finds rivastigmine patent obvious

Author: Christopher Hayes (Atlantic Chambers, Liverpool)

Generics UK Limited (t/a Mylan) v Novartis [2011] EWHC 2403 (Pat), (Floyd J), 30 September 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr191, first published online: December 6, 2011

A court has invalidated Novartis' patent and SPC for rivastigmine as being obvious in light of prior art.

Legal context

The analysis of the inventive step of a patent requires a multifactorial assessment of technical subject area. The British courts and the EPO use slightly different frameworks to assess the inventive step. In this case, the Patents Court for England and Wales has stated that the same conclusion would be used using the EPO approach. The current case looks at the validity of a pharmaceutical patent, for the enantiomeric drug rivastigmine.

Facts

Rivastigmine is sold under the brand name ‘Exelon’, for the treatment of Alzheimer's disease (AD). Rivastigmine is an enantiomer: it contains a carbon atom which forms chemical bonds with four different chemical groups. Such enantiomers can exist in a right-handed or left-handed form. Often the first time such molecules are synthesized, the product will contain a mix of equal amounts of both enantiomers. Such mixtures containing an equal amount of both enantiomers are called racemates. The racemic mixtures can then be resolved into their individual enantiomers, for subsequent testing of their pharmacological properties.

Novartis held a patent for rivastigmine, UK 2,203,040 (the '040 patent) which had a priority date of 4 March 1987, which expired on 29 February 2008. The '040 had the benefit of supplementary protection certificate (SPC) which extended the period of protection until 30 July 2012. Generics UK commenced proceedings for the revocation of the '040 and the SPC on 3 March 2011. Given the proximity of the expiration date of the SPC, this matter proceeded to trial very quickly. In a little over six months, the matter was heard at trial on 5–7 September 2011.

The only attack brought forward by Generics UK was that the '040 patent was invalid for lack of inventive step. In consequence, the SPC for rivastigmine would also be invalid for failing to be covered by a basic patent. The obviousness case was based on the state of the current general knowledge (CGK) at the priority date and two publications.

Turning to the prior art publications, the first was a patent application by Weinstock (EPA 193,926) which disclosed the racemic mixture. The second publication was also by Weinstock from 1986 and was entitled ‘Pharmacological activity of anticholinesterases of potential use in the treatment of Alzheimer's disease’.

Floyd J found that, at the priority date, the clinical features of AD were known. Acetylcholine was a known neurotransmitter, and it was understood how acetylcholine was synthesized and acted on synaptic receptors. It was also known that there was a link between the pathology seen in AD and the acetylcholine system and it was postulated that the enhancement of the acetylcholine signalling system might be of therapeutic benefit in AD disease. This hypothesis was supported by some reported clinical data using the drugs physostigmine and tacrine.

Physostigmine was known to counteract the effect of overdoses of anticholinergic drugs and had also been shown some efficacy in AD. Physostigmine had severe limitations as a potential treatment; it caused intolerable side effects of therapeutic doses (or doses close to therapeutic) and has duration of action of typically 30 minutes. Although there were other hypotheses, the cholinergic was regarded as the most promising to yield potential drugs to treat AD.

Analysis

For the purposes of the obviousness analysis, it did not matter whether one started with the Weinstock publication or with the application. The necessary steps were to start with choosing the racemate, resolving the racemate into its constituent enantiomers, and then finally preparing a medicinal compound containing rivastigmine for the treatment of AD.

The Weinstock articles showed that the racemate was the most promising candidate disclosed from the other compounds taught to choose for further research. Therefore it would be obvious to choose the racemate to start from.

It was further agreed that this racemate could be easily separated and that the skilled team would consider resolving a racemate into its enantiomers at the priority date. The evidence was that, since the advantages of an enantiomer cannot be predicted in advance, the skilled team would resolve the racemate to test the properties of the enantiomers. The judge therefore concluded that there was nothing inventive in deciding to resolve the racemate into the enantiomers, although it was noted that the absence of evidence from Novartis on the invention history assisted Generics UK in this regard. Once rivastigmine has been resolved, Floyd J considered it would be obvious to formulate it into a pharmaceutical composition.

Floyd J concluded that using rivastigmine for the treatment of AD was conceptually obvious from the Weinstock articles. It would also be obvious to resolve the enantiomers, and the chemistry involved in the resolution would be found to be unproblematic to the skilled team. Formulating a pharmaceutical composition of rivastigmine would be entirely obvious.

Although Floyd J applied the Windsurfing formulation to determine whether the '040 contained an inventive step, he said that his result was consistent with the problem–solution approach employed by the EPO. The problem was how to achieve the desired effect from an enantiomer starting with the racemate taught by the Weinstock articles, and the solution could be found in the common general knowledge.

In conclusion, the '040 patent was obvious and as a result the rivastigmine SPC was also invalid.

Practical significance

In the two most recent UK cases involving the obviousness of pharmaceutical enantiomer patents, Lundbeck (House of Lords) and Daiichi (Court of Appeal), the patents were held to be inventive, although the priority dates were later than in these cases.

Floyd J pointed out that an obviousness analysis will always turn on the facts of the individual case. In this case, the evidence was that the chemistry involved in the resolution of the enantiomers was straightforward and posed no problems to the skilled team to produce the enantiomers from the racemate, whereas, in Lundbeck and Daiichi, the chemistry involved in resolving the individual enantiomers from their respective racemates was not straightforward.

Although the judge reached a different conclusion regarding the validity of the rivastigmine enantiomer patent when compared with the enantiomer patents at issue in Lundbeck and Daiichi, he distinguished the cases based on their respective facts. It appears that a key difference was that the resolution of the enantiomer in this case did not involve any invention. Indeed, the resolution of the racemates into the single enantiomers in Lundbeck and Daiichi required invention.

Novartis's case on obviousness was not aided by the fact that it did not lead evidence on the history of its invention. Although the patentee is not obliged to bring forward such evidence, this case illustrates the importance of this type of evidence, particularly where validity is at stake. This case shows that patentees should be reluctant not to lead evidence of their invention story when resisting an obviousness attack.

Latest issue; aspirational branding and urban looting

The December 2011 issue
is the last to bear this colour.
Next month JIPLP launches
its smart new look for 2012
The December 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has been online for a little while now, but there has been so much going on that I forgot to let everyone know.  The online issue is available to all online and online/hardcopy subscribers as part of their subscription package.  non-subscribers can access the contents here and can purchase access to articles even  if they are not JIPLP subscribers.  Subscribers and non-subscribers alike can also see what has been available on the JIPLP Advance Access feature, where articles, Current Intelligence pieces and book reviews are posted weeks, and sometimes months, ahead of their paper publication date.  Again, this service is part of the subscription package, but non-subscribers can also pay for access.

The Editorial for this issue, 'Property! What property?', takes a look at the relationship between aspirational branding and urban looting. You can read it in full here:
"Property! What property?

This editorial was penned while shocked shopkeepers dig through the wreckage of their High Street stores in search of salvageable stock, while weary police sift through the ashes and the rubble in pursuit of evidence, forensic or otherwise, that will lead to a conviction. It is England's summer season of riots and looting, of random mindless violence and—in contrast—some curiously selective theft.

Desirable brands have been among the targets of the looters who, excited by the prospect of owning high fashion wear or cool sports clothing that lies beyond their immediate budgets and short-term expectations, have simply helped themselves. Some have hidden their faces under hoods and behind balaclava helmets, while others have taken no such precautions to preserve their anonymity. All have performed before an audience of security cameras and, as I write these words, many have already been visited by the enforcement agencies, charged and even sentenced for their criminal offences.

It is not just product brands that have suffered this treatment. Some popular High Street retail outlets have been ravaged too, their mannequins stripped, shelves cleared and carrier bags purloined as a handy means of making off with stolen property. Only e-tailers were spared, discounting the apocryphal tale of the young lad who smashed his computer screen in a hopeless attempt to raid an eBay vendor.

In November 2010 an editorial in this journal, entitled “IP and the Moral Maze”, decried the divorce which had taken place between the morality of intellectual property and the economics of it. That editorial argued that, for as long as intellectual property is seen merely as a means of adjusting the barriers between the trading territory of its owner and that of its competitors, and is shorn of its moral dimension, it will remain difficult to raise a persuasive case that copying is somehow wrong.

It now seems, at least in the consumer dystopia of England 2011, it is not merely intellectual property that has come adrift from its moral roots since the same fate has befallen physical property, both real and personal. Stealing an expensive and desirable pair of branded sports shoes is not just a question of taking possession of chattels without legal justification: it is a statement that one has bought into the aspirations which the brand conveys to those who wear it and that, as such an aspirant, one has a greater right to the shoes than does, for example, the inherently non-aspirational limited liability company which owns it. To put it another way, in terms of the aspirationally magnetic call of one leading brand owner, if you are a “Just do it” sort of person, you just do it.

What, if anything, can be done? This was never a problem when branding was a concept linked to cattle rather than to consumer goods and when trade marks reflected little other than a connection in the course of trade—but the genie of aspirational branding has been let out of the bottle and there's no chance of getting it back in. It sells goods, builds loyalty and makes both brand owners and consumers happy.

Is there such a thing as sensible aspirational branding? There was, once. Some readers may wish to ponder Disney's “small world” ethos, harking back to the 1960s, and its step-sister in Coca-Cola's 1970s “one world” aspiration, based on “I'd Like to Teach the World to Sing in Perfect Harmony”. Laudable as these aspirations are, one senses that they are worlds away from today's brands which compete in what is not so much a race to the bottom as a sprint to the edge: a brand must have ‘edge’ if it is to maximise its pulling power among young, brand-conscious purchasers.

So is there a way of branding that will foster a responsible attitude towards the property of others while yet remaining attractive, dynamic, unconventional and daring? Is there a way we can train consumers to keep their loyalty within manageable bounds? In short, can we use branding as a way of teaching respect for property, both physical and intellectual? And if these questions can be answered in the affirmative, who will take the risk of implementing such techniques in the volatile consumer markets of today?".

Infringements in transit: current law, future prospects

If the contents aren't on sale, or intended for sale,
in the EU, they can't be counterfeits, can they?
The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a seminar on Wednesday 18 January 2012, from 3pm to 6pm, on the topic "Infringements in transit: current law, future prospects". This event is kindly hosted by law firm Olswang LLP in its London office, 90 High Holborn.

The speakers are Marius Schneider (Eeman & Partners, Brussels), Olivier Vrins (Altius, Brussels) and Phillip Johnson (Visiting Senior Fellow, Queen Mary, London), and panelists are Michael Edenborough QC (Serle Court), Paul Stevens (Olswang LLP) and Lucy Nichols (Nokia). Jeremy Phillips will be in the chair.

Marius, Phillip, Paul and Lucy are members of the JIPLP editorial board, and Olivier is the author of a deep analysis of proposed reform, "The European Commission's proposal for a regulation concerning Customs enforcement of IP rights", which was published in the November 2011 issue of JIPLP. Marius and Olivier are the editors of the authoritative Oxford University Press publication Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, the second edition of which will be published shortly.

The programme is provisional at this stage, but it is envisaged that Phillip will explain the framework of EU legislation on the suspensive detention of goods, Marius will discuss the Nokia and Philips rulings and Olivier will address prospects of reform. The final version of the programme will be published in due course.

Admission is free, refreshments will be provided and it is expected that there will also be CPD points.

If you'd like to book yourself in, please email me here with the subject line "Fakes in Transit seminar".  Please don't expect an instant acknowledgement, but I'll do what I can.

Protection of geographical indications against translation, generic use, evocation, and other potential enemies

Author: Miguel Angel Medina González (Elzaburu, Madrid)

Bureau National Interprofessionnel du Cognac v Korkein hallinto-oikeus, Court of Justice of the European Union (First Chamber), joined cases C-4/10 and C-27/10, 14 July 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr182, first published online: November 29, 2011

The ECJ has confirmed the applicability of EC Regulation 110/2008 on the definition, description, presentation, labelling, and the protection of geographical indications (GIs) of spirit drinks in assessing the validity of a trade mark registration that contains a GI, even where registration took place before the regulation entered into force, and that a mark which contains a protected GI must be refused or invalidated, where its use would lead to any of the situations referred to in Article 16 of the regulation.

Legal context

Two national trade mark applications containing elements protected under GI regulations were filed in Finland. It is an accepted fact that the TRIPS regulations have been incorporated into the applicable EU regulations.

In its judgment, the court dealt mainly with questions concerning the temporal and direct applicability of certain regulations (EC Regulation 110/2008 and previous EC Regulation 1576/89 as amended by Regulation 3378/94, among others) and their compatibility with the principles of legal certainty and protection of legitimate expectations. The court also explored the prohibition of registration of trade marks containing a GI protected by EC Regulation 110/2008 or such an indication in the form of a generic term or a translation when they cover spirit drinks which do not meet the requirements set for use of the GI. Articles 14, 15, 16, and 23 were analysed.

Another topic addressed was whether such trade marks are liable to mislead the public in the way referred to in Article (1) (g) of the Trade Mark Directive (TMD)—which is the same under the current TMD (2008/95/EC) as in the previous TMD (89/104)—and whether registration of trade marks which contain elements infringing Regulation 110/2008 can be prohibited on the basis of Article 3 (2) (a) of the TMD by a Member State. This article provides that a trade mark is to be rejected or invalidated if its use can be prohibited by virtue of legislation other than the trade mark law of the Member State in question or of the Community.

Facts

The Finnish company Gust. Ranin Oy applied to register two trade marks consisting of bottle labels in Class 33. One of them, No 226350, had ‘Konjakit’ (‘Cognacs’) as its specification of goods and the other, No 226351, was for ‘liqueurs containing konjakki’.

The first included the expression COGNAC L&P HIENOA KONJAKKIA Lignell & Piispanen ‘Product of France’ ‘40%’ ‘Vol 500 ml’; and the second included ‘KAHVI-KONKAKKI Café Cognac Likööri – Likör – Liqueur’ ‘Lignell & Piispanen’ ‘21%’ ‘Vol 500 ml’.

Both trade marks were registered and subsequently opposed by the Bureau National Interprofessionel du Cognac (BNIC). The opposition was accepted against the first and rejected against the second. Appeals were filed by the applicant and the opponent. The appeal of the applicant was upheld, while that of the BNIC was dismissed. As a result, both registrations were granted, against which the BNIC appealed in the Supreme Administrative Court (‘Korkein hallinto-oikeus’), which referred certain questions to the ECJ for a preliminary ruling.

Analysis

The first question of the Finnish court refers to the applicability of EC Regulation 110/2008 in assessing the validity of a trade mark registration that contains a GI protected by the regulation, where registration took place before the regulation entered into force.

The ECJ stated that EU measures must not take effect from a point in time before their publication, but there may be clear exceptions depending on their terms or general scheme or where their purpose so demands and legitimate expectations are duly respected. The court finally concluded that Article 23 (1) of EC Regulation 110/2008 clearly makes it possible to refuse or invalidate a trade mark registered before the entry into force of the regulation.

The court added that, in the present case, there is no question as to the applicability of the TRIPS time limits, as the trade mark was not registered before 1 January 1996 or before the date of protection of the COGNAC GI, these two situations being foreseen in TRIPS.

In its second question, the Finnish court asked whether Articles 16 and 23 of EC 110/2008 preclude the registration of a mark containing a protected GI, or such an indication in the form of a generic term and translation, and which is registered for spirit drinks which do not satisfy the conditions for the use of that GI.

Regarding Article 23, the ECJ considered that, according to paragraph (1), registration of a mark which contains a GI registered in its Annex III (eg COGNAC) is to be invalidated, if its use would lead to any of the situations referred to in Article 16 of that regulation. As a result, national authorities must refuse or invalidate the registration of a mark if it is used in such circumstances and is not covered by the temporary derogation provided for in Article 23(2) of that regulation (which incorporates the temporal derogations provided by TRIPS).

As to Article 16, it considered that it refers to situations in which the marketing of a product is accompanied by a reference to a GI in circumstances liable to mislead the public as to the origin of the product or, at the very least, to set in train in the mind of the public an association of ideas regarding that origin or to enable the trader to take unfair advantage of the reputation of the GIs concerned.

The court stated that the extent of the protection must be assessed in light of the rule in Article 15(4), whereby the GI may be borne only by spirit drinks which meet all the specifications in the technical file concerning the GI and reiterated that Articles 15 (3) and 14 (2), respectively, provide that GIs cannot become generic and cannot be translated on the label or in the presentation of a spirit drink, and that this is applicable to ‘Cognac’.

Of the situations provided for in Article 16, the ECJ considered that, in relation to point (a), the ‘spirit drinks’ covered by the relevant marks were ‘comparable’ to the spirit drink covered by the GI ‘Cognac’ and therefore the marks make a ‘direct commercial use of a geographical indication in respect of products which are comparable’, but which are not covered by the GI.

As to point (b), the ECJ declared that the use of ‘Cognac’ for spirit drinks which do not meet its specifications may be categorized as an ‘evocation’.

Practical significance

A bit of light in the sometimes confusing mix of European Union regulations concerning GIs
An important question is that of the applicability of the prohibitions under EC Regulation 110/2008 (which are stronger than those in the previous Regulation 1576/89) to those trade marks already registered before the entry into force of Regulation 110/2008.

The question of which regulation may be applicable, particularly in cases of conflict between GIs and trade marks, where the applicable EU regulations have gone through amendments after a certain trade mark and a certain GI were protected, seemed to be open to discussion. This is particularly true in the case of wines, where amendments have been particularly frequent and sometimes it is even difficult to know exactly which rule was in force at a certain time. This decision points in a certain direction which could be a guideline for future cases and other products, like wines.

A bit of shadow over the concept of ‘evocation’
The ECJ has made reference to the concept ‘evocation’ in previous judgments, including for example Case C-87/97 Cambozola v Gorzonzola or C-132/05 Parmesan, and provided as an illustration a situation where the image triggered in the mind of the consumer by the new trade mark incorporating part of the protected designation was that of the product whose designation was protected. It is rather shocking that the court now mentions as ‘evocation’ a situation where the trade mark does not include a part of the protected designation as used to be the case (eg Cambozola or Parmesan), but the expression ‘Cognac’ as such (Paragraph 58 ‘… Cognac for spirit drinks which do not meet the relevant specifications may therefore be categorised as an evocation’).

Other aspects of interest
The ECJ also referred to the non-generic nature of protected GIs and to the prohibition of translations.

The fact that the specifications of goods covered by Trade Mark No 226350 are ‘Cognacs’ may seem to be a generic use and suggest no intention to make the products comply with the specifications of use of the GI. The situation is clearer in the case of Trade Mark No 226351 for ‘liquors containing konjakki’, which then are not ‘Cognac’.

The decision also appears to conclude that a protected GI cannot be translated.

Proof reading

"Now, is that 'i' before 'e'
except after 'c' ...?"
I recently received an email advertisement for a proof-reading service which contained, inter alia, the following text:
" ... We are offering an efficient service to help you and your colleagues ensure that your academic and professional work is written in perfect English. We will check the grammar and style of your work and return it to you to meet your requirements and deadlines.

If your research has too many English spelling and grammar errors, or if the publisher’s style guide has not been followed, your research may be rejected without due regard to its content. We strongly suggest sending the document to us for editing and proofreading before submission, particularly if English is not your first language.

We can provide you with a professional proofreading service at a very reasonable rate. All our proofreaders are highly qualified native English speakers. Many work as leading academics in their fields and all have extensive experience of proofreading to the highest standards. We ... [cover] all academic areas including ... Law ...

... All you have to do is send us your document ... with the deadline and we will guarantee delivery of a perfectly written document to give you complete confidence when you submit your work. The fee is worked out on a flat rate (£7.99 per thousand words or 0.799 pence per word), so you know exactly how much the proofreading will cost in advance. ..."
This service is provided by one of a large number of companies which vie with each other for the custom of authors.  Sadly it is my impression that, even at the relatively modest sum which these companies charge, virtually no use is made of their services by anyone who submits material for publication in JIPLP. This is a pity, since poor-quality text distracts peer reviewers and incurs extra, quite unnecessary labour for the editing and production staff.  Good-quality proof reading would benefit not merely those contributors who are not native English-speakers but those who are and who, because they have never learned the rules of their native language or have forgotten them, sometimes produce texts of woeful quality.

JIPLP does not make the engagement of a professional proof-reader a condition for the submission of articles and Current Intelligence notes; nor does it propose to do so. However, we wish to remind readers that an error-free page of text is not a sign of pedantry; it is evidence that its author has attained a degree of proficiency in communicating his or her thoughts which cannot be impeached for fostering distractions. If you don't wish to engage the services of a professional, do at least remember to check for textual imperfections yourself!

Interflora: the last word on keyword advertising?

Author: Darren Meale (SNR Denton UK LLP)

Interflora Inc v Marks & Spencer Case-C323/09, Court of Justice of the European Union, 22 September 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr180, first published online: November 23, 2011

Several years of Court of Justice jurisprudence on the legality of an advertiser using a competitor's trade mark to trigger the display of sponsored listings on search engines have come to a conclusion. Having already largely approved the practice, the Court of Justice has now, in the interests of fair competition, declined to give famous marks any additional rights to prevent it. But uncertainties remain, particularly as regards the application and effect of some of the newly emerging functions of a trade mark.

Legal context

When European trade mark law was first put together, Google, along with most of the internet, was very much a series of twinkles in their eventual creators' eyes. It is thus hardly surprising that, some 20 years later, those laws have repeatedly struggled to cope with technological and commercial practices which were barely imaginable when they were drafted. Alongside online piracy, search engine keyword advertising is a prime candidate for trade mark law's biggest headache. In a series of judgments which are likely to conclude here, the Court of Justice (ECJ) has explained how the old laws apply to an entirely new form of advertising which has arrived to both the delight and the despair of brand owners.

Facts

When consumers searched on Google for the term ‘interflora’, as well as seeing ‘natural’ results for the famous network of independent florists, they also saw sponsored listings—advertisements—for Marks & Spencer's online flower delivery service. This was because M&S had ‘bid’ on Interflora's well-known trade marked name, paying for its advert to be displayed when a user searched for its competitor. This practice, referred to here as ‘keyword advertising’, has been considered a useful advertising tool by some brand owners. Others, however, have sought to prevent it by asserting their trade mark rights. Interflora is one such brand owner: it sued M&S for trade mark infringement in the High Court of England and Wales.

The case was heard by Mr Justice Arnold who, in 2009, sought guidance from the ECJ on the application to keyword advertising of Articles 5(1)(a) and 5(2) of the Trade Marks Directive (Directive 89/104, now replaced by Directive 2008/95) as well as the substantially identical Articles 9(1)(a) and 9(1)(c) of the Community Trade Mark Regulation (Regulation 40/94, now replaced by Regulation 207/2009). Those questions, as addressed by the ECJ, now provide guidance on two issues:

  • whether keyword advertising adversely affects any of the functions of the trade mark used, in particular the essential function, advertising function, or the investment function; and
  • whether, without due cause, keyword advertising takes unfair advantage of or causes detriment to the distinctive character or repute of the trade mark used.

Guidance on the first issue has been largely repeated from earlier ECJ jurisprudence, so contains few surprises. The second and perhaps crucial issue has now received its first full consideration.

Analysis

The ECJ did most of the hard work on keyword advertising in a set of judgments which began before Interflora commenced but which concluded after the High Court's 2009 reference: Joined Cases C-236/08 to C-238/08 Google France [2010] ECR I-2417, 23 March 2010. Additionally, keyword advertising enjoyed consideration in Case C-278/08 Die BergSpechte [2010] ECR I-2517, 25 March 2010; Case C-91/09 Eis.de, 26 March 2010; and Case C-558/08 Portakabin Ltd v Primakabin BV [2010] ECR I-0000, 8 July 2010. Arguably, this body of jurisprudence rendered a proportion of the reference in Interflora redundant by the time the ECJ came to consider it (around half of the questions the High Court had originally posed were withdrawn in light of these decisions).

Issue 1: Article 5(1)(a)/9(1)(a) and the functions of a trade mark
Google France and the cases which followed it established that advertisers ‘used’ a trade mark when indulging in keyword advertising, and that such use was ‘in relation to’ the goods and services for which the trade mark was registered. The ECJ in Interflora confirmed this.

Following a long line of ECJ jurisprudence stretching back to Arsenal v Reed Case C-206/01 [2002] ECR I-10273, Google France also held that, notwithstanding that keyword advertising involved use of an identical trade mark for identical goods or services—putting it squarely in the purview of Article 5(1)(a)/9(1)(a)—such use only infringed if it was liable to have an adverse effect on one of the functions of the mark. While everyone knows that the ‘essential’ function of a trade mark is as a badge of origin, the ECJ judgment in L'Oréal Case C-487/07 [2009] ECR I-5185, 18 June 2009, confirmed that trade marks have any number of functions. Three were considered in Interflora—only one need be affected for infringement—the essential function; the advertising function and the investment function.

Essential function
In Google France, the ECJ held that keyword advertising would infringe Articles 5(1)(a)/9(1)(a) in circumstances where the advert made it difficult for consumers to work out whether the advert originated from the trade mark proprietor or a person economically linked to it as opposed to some unconnected party. In such a case, the essential function of the trade mark—as a badge of origin—would be affected.

The ECJ in Interflora confirmed this approach, considering it in light of Interflora's nature as a network of independent florists. Would the essential function of the mark be affected if internet users wrongly gained the impression from the advertising that M&S was part of the Interflora network? Yes, held the ECJ. However, it qualified this conclusion by noting that internet users are to be considered reasonably well-informed and reasonably observant and so it would not be enough if merely ‘some’ had ‘difficulty grasping that the service provided by M&S is independent from that of Interflora’. While this is ultimately a question to be answered by the national court on the facts, the ECJ's view was that, in the case of a network as large and diverse as Interflora's, internet users may find it ‘particularly difficult’ to work out whether an advertiser is in or out of the network. The ECJ thus hinted that in a case such as Interflora, it is up to the advertiser to make sure its advert uses sufficient words to enable the user to make the distinction.

Advertising function
The greater the number of advertisers which bid on a particular keyword, the more it costs each of them to do so. Thus M&S's bidding on ‘interflora’ made it more expensive for Interflora to do the same, forcing it to either do less advertising or spend more on the same. That might appear a good basis for an argument for impairment of the ‘advertising’ function, but that argument has already been rejected by the ECJ in Google France.

The ECJ in Interflora took the same view, although it stated that keyword advertising would not be adverse to the advertising function ‘in every case’, suggesting it might be in some. It then sought to justify its decision not to consider the above ‘repercussions’ as sufficiently ‘adverse’. Trade mark law, it said, was not in place to protect a proprietor against ‘practices inherent in competition’. Further, keyword advertising's general aim was to offer an internet user an alternative to whatever he or she had searched for (the ECJ implicitly acknowledging that this is a good thing). Finally, and hinting at what would impair the advertising function, the ECJ stated that keyword advertising does not have the effect of ‘denying the proprietor of … the opportunity of using its mark effectively to inform and win over consumers’. The author questions this assertion—it might well deny a proprietor this opportunity if he cannot afford the increased costs of his advertising.

Investment function
The trouble with many of the functions which are ascribed to trade marks following L'Oréal is that they are little more than buzzwords. The ECJ has now given one such buzzword, ‘investment’, some context. The ECJ says that a trade mark may be used ‘to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty’, which sounds suspiciously like saying that a trade mark can attract goodwill. Investment can be made in a mark, says the ECJ, by advertising but also by other (unspecified) commercial techniques. Any ‘substantial interference’ with this goal of reputation acquisition or preservation will amount to an adverse affect on the investment function which a proprietor may prevent. The ECJ adds that, where a trade mark already enjoys a reputation, the investment function is impaired by a use which ‘affects that reputation and thereby jeopardises its maintenance’. Note that there is no requirement here of ‘substantial’ affect, and it is not obvious whether the ECJ is referring to a trade mark which enjoys a reputation in the Article 5(2) sense (see below) or in some other sense. The conclusion here is therefore unclear.

In a nod to fair competition, this guidance is qualified by the ECJ's remark that it is not enough ‘if the only consequence of [the] use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve’ its reputation. Again this is hardly clear. Would not the proprietor only be forced to adapt because otherwise his reputation would be in jeopardy or otherwise interfered with? While it is helpful to know something about what some of the myriad functions of a trade mark mean, on this one we remain only a little wiser.

Issue 2: Article 5(2)/9(1)(c) and the additional protection afforded to famous marks
Trade marks with a reputation—often termed ‘famous’ or ‘well-known’ marks—gain additional protection under European trade mark law. The Google France cases, and the jurisprudence which predates Interflora, approached keyword advertising from the point of view of the protection given to all marks, not just the famous. That jurisprudence has largely been seen as giving advertisers the all clear to indulge in keyword advertising.

However, for the most part, advertisers will bid on the trade marks of their most successful competitors: many, if not most, of the trade marks bid upon will be famous ones. Following the ECJ's judgment in L'Oréal, which came in for heavy criticism from the Court of Appeal in England and Wales and elsewhere, famous brand owners' rights have been significantly bolstered, at least as regards their ability to prevent ‘unfair’ advantage taking. Thus the ECJ set itself up for something of a collision: on the one hand, Google France says keyword advertising—which undoubtedly allows an advertiser to gain an advantage off the back of his competitor's mark—is ok, while on the other L'Oréal regards all forms of advantage taking of marks with a reputation (like the INTERFLORA mark) as unfair. Which side would prevail?

Rather than unravel all of the previous Google France-led case law, the ECJ appears to have continued to find in support of keyword advertising, with favourable findings in respect of the limbs of Article 5(2)/9(1)(c) concerning both detriment to distinctive character (or ‘dilution’) and unfair advantage.

Dilution
Dilution is the whittling away, over time, of the distinctiveness of a mark such that it loses its ability to distinguish one trader's goods or services from another's. Interflora's concern was that M&S's practice would cause INTERFLORA to become a generic term for any flower delivery service. The ECJ was not convinced, holding that unless an internet user is confused by an advert, the advert will only serve to present M&S's service as an alternative offering, thereby preserving the distinctiveness of the INTERFLORA brand (an argument not without its counters). This means that dilution is effectively a non-runner in any attack on keyword advertising: if a proprietor needs to show confusion before it can start arguing dilution, it will already have succeeded on other trade mark grounds, and need not bother further.

Unfair advantage
The ECJ noted that keyword advertisers do obtain a ‘real advantage’ from bidding on their competitor's famous brand names, noting that because of the fame of those names, a large number of consumers will search for them and thereby see competitors' keyword adverts. In L'Oréal, the ECJ held that such ‘riding on the coat tails’ of a mark's reputation is unlawful where the advantage taker neither provides financial compensation to the brand owner in respect of it, nor makes its own marketing efforts. This much criticized decision, given to render smell-alike look-alike imitation perfume products unlawful, led the ECJ in Interflora to the inevitable conclusion that keyword advertising also took unfair advantage of marks with a reputation.

However, noting that keyword advertising is essentially about traders presenting consumers with alternative products and services, the ECJ chose to save it from unlawfulness as follows. Taking unfair advantage under Article 5(2)/9(1)(c) is only unlawful if it is done ‘without due cause’. Presenting one product as an alternative to another, absent any confusing, dilution, tarnishment, or any other wrongdoing, was fair competition, and so while the ECJ was not prepared to rule that the advantage taken is fair, it did conclude that it was with due cause, and therefore lawful. In doing so it indicated that the harsh approach in L'Oréal might be reserved for ‘imitation’ products, although quite what those are is not clear (see ‘Trade marks: Owners of famous brands given wide rights to prevent the use of their trade marks in comparative advertising’ JIPLP (2010) 5(8): 550–552).

Practical significance

With this decision, the ECJ has now covered almost all the bases so far as trade mark law and keyword advertising are concerned. However, it is now for Arnold J and the High Court to apply the ECJ's guidance to conclude Interflora and M&S's dispute. The ECJ has given a fairly clear steer on some points: the author anticipates that M&S will now prevail against Interflora as regards Article 5(2)/9(1)(c), on the basis that it is only taking advantage with due cause so as to present alternative products. However, the ECJ's guidance on the investment function is far from enlightening and the case could go either way on that (although the author suspects Arnold J might be reluctant to give such an imprecise function too strong an effect). Moreover, the unique nature of Interflora as a network, and the ECJ's comment that consumers might find it ‘particularly difficult’ to work out whether M&S is a part of that network, provide a firm pointer to the High Court that Interflora should ultimately prevail under Articles 5(1)(a)/9(1)(a). Arnold J may not agree.

Most cases of keyword advertising, however, do not involve brand owners which are comprised of Interflora-like networks. Aside from this complication, it now appears that the ECJ has given the go ahead to ‘normal’ keyword advertising, and most advertisers may now indulge in it in relative comfort. But not everything is perfect. To the extent they have now been defined, many of the functions of a trade mark (such as investment) remain vague and opaque, all but guaranteeing future disputes as to their meaning, whether in the context of keyword advertising or elsewhere. Further, if the internet continues to evolve at the astounding pace it has in the past decade, we may find this entire body of law redundant in five or so years, in which case we shall have to start the whole process all over again when the next big thing comes along.

How to abbreviate Europe's senior court: time to ask again

In January of this year the jiplp weblog reported that, following a poll of its readership, a handsome majority voted to retain "ECJ" as the preferred abbreviation of the highest court in the Court of Justice of the European Union. 69% of respondents opted for ECJ, while just 25% favoured CJEU. We wrote at the time:
"We'd be grateful if contributors of future copy would please bear this in mind when submitting material for publication".
It has however become apparent that the proportion of contributors using CJEU in preference to ECJ has steadily increased, to the point that a preponderant majority of manuscripts submitted to JIPLP use CJEU and the journal is becoming somewhat isolated in its use of ECJ.  Accordingly I have decided to put the matter to the vote again, to ascertain whether readers agree that the time for change has arrived.  The poll appears at the top of the jiplp weblog's side bar and will be open for a week.

Euro-injunction mechanism in Community designs: Samsung Galaxy Tab European ban partially lifted

Author: Séverine Mas, avocate

Apple Inc. v Samsung Electronics GmbH and Samsung Electronics Co. Ltd, Düsseldorf Tribunal of first instance (Landgericht), Germany, Press Release No 013/2011 of 9 September 2011 concerning case No 14 c O 194/11

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr181, first published online: November 23, 2011

The 14th Civil Division of the Düsseldorf Tribunal of first instance confirmed an interim decision preventing the German firm Samsung Electronics GmbH from selling the Samsung Galaxy Tab 10.1 in the whole of the European Union, on account of a potential infringement of a Community design registered by Apple. The ban was, however, restricted to the German territory for sales by Samsung Electronics Co. Ltd, based in South Korea.

Legal context

The court examined its authority to grant a European injunction in the case of a Community design infringement, in application of Articles 82 and 83 of the Community Designs Regulation (EC Regulation 6/2002), following two interim decisions rendered on 9 and 16 August by the same court.

Facts

In a preliminary injunction (9 August 2011), the Düsseldorf court of first instance prohibited the sale, import, export, and interim storage of the Samsung Galaxy Tab 10.1 in the whole of the EU except in the Netherlands, on the grounds that it potentially infringes Apple's Community design rights (Community design 000181607 for the iPad product).

However, the President of the Düsseldorf court announced on 16 August that execution of that decision was suspended. The announcement stated that the court did not have jurisdiction to grant a European-wide injunction forbidding a company based outside the European Union to commercialize its products in the EU. The ground stated for the suspension was that the court was asked to examine an interim matter and thus did not have such far-reaching powers.

The decision for the appeal filed by Samsung against the 9 August injunction, following the court hearing of 25 August, was rendered on 9 September.

The Landgericht maintained the injunction against Samsung Electronics GmbH, a German company, confirming the prohibition of selling the Samsung Galaxy Tab 10.1 in the EU, and in particular, the prohibition of producing, offering for sale, commercializing, importing, exporting, or storing the product for these purposes.

With regard to Samsung Electronics Co. Ltd, based in South Korea, the court has, however, limited the ban to the German territory. The European-wide ban was lifted.

Analysis

Competition is fierce in the tablet PC market, and registrations of IP rights are some means of obtaining a competitive advantage. The current context is part of a legal strategy between Apple products and Android-based smartphones and tablet PCs (Android is an open-source operating system created by Google, used by several manufacturers including Samsung).

The mechanism of the European injunction in favour of Community design owners allows Community design courts to prohibit the sale of a product potentially infringing a Community design, in the whole European Union territory, without examining the grounds for the claims (ie the validity of the design registered). As the German decision has not yet been published, we assume that the injunction was based on Article 85 of the Community Designs Regulation. The Regulation on Community designs requires that in proceedings for an alleged infringement action, the courts treat the Community design as valid (Article 85 of the Regulation). Validity can only be challenged through a counterclaim for a declaration of invalidity, or by way of counterclaim in so far as the defendant claims that the Community design could be declared invalid on account of an earlier national design right belonging to the defendant.

The Düsseldorf Landgericht's summary judgment of 9 August is an exceptional decision, given its scope and potential consequences. We should, however, bear in mind that the tribunal had no choice but to consider the design as valid. Acting on an interim matter, the court could not examine the grounds of the claims. It could only examine the existence of IP rights on which the claims were based.

This leads on to the validity of the Community design. Apple's registered Community design may be seen as so basic that the ‘individual character’ condition of Article 6 may be absent. In addition, the shape of the design can be considered being dictated by the functionality of a tablet PC (Figure 1).


Apple's registered design for a handheld computer

Design law requires that the form of a design not be solely dictated by its technical function (Article 8 of the Regulation). It is therefore questionable that a simple rectangular, flat geometric shape be registered as a Community design for a tablet PC. The shape in itself could be seen as being dictated by the functionality of the apparatus, which is to provide a tactile screen for interaction with the user.

In conclusion, it is possible that the design may be declared invalid in the future. The legal issue at stake would then fall under the realms of unfair competition rather than of industrial property rights.

Practical significance

A similar provision relating to trade marks allows national courts to grant Euro-injunctions in favour of trade mark owners (Article 98 of the Community Trade Mark Regulation). The extent of jurisdiction on Community design infringement depends on the international jurisdiction criteria stated in Article 82 of the Community Designs Regulation. Article 82(1) states that infringement proceedings
shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.
Article 85(2) states that if
the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.
If the claimant or the defendant is domiciled or has an establishment in the Member State, the Community Design Court will have authority to grant a Euro-injunction based upon the Community Design Regulation, Article 83(1). If, however, the court is acting only so as to stop potential infringement in the Member State in which the act of infringement has been committed or is going to be committed—the forum loci delicti (Article 82(5))—it will not have the authority to grant a Euro-injunction (Article 83(2)).

In the present case, the defendants were Samsung Electronics GmbH (based near Frankfurt) and Samsung Electronics Co. Ltd (headquartered in South Korea). The reasoning behind the suspension of the execution of the original 9 August decision is that the court only had jurisdiction to grant a Euro-injunction towards Samsung's German defendant. With regard to Samsung Korea, the company is not viewed as an ‘establishment’ in the sense of the Regulation. This may be due to a problem of translation of the European Regulation into German. In the German version of the text, the term ‘establishment’ is translated as ‘Niederlassung’. This can mean either an independent company or a subsidiary.

In order for Article 82(1) to apply, Samsung Electronics GmbH would need to be considered a subsidiary of Samsung Electronics Co. Ltd (South Korea). This seems not to be the case. Due to the plaintiff's headquarters being situated in California, Article 82(2) could not be applied either.

The appropriate form of action in order to obtain a Euro-injunction would have been for Apple Inc. to have applied to the courts of Alicante in Spain, where the OAMI is situated (Article 82(3)).

Industrial property offices have a great responsibility in maintaining a healthy market, by being cautious before granting industrial property rights. The combination of Articles 83 and 85 of the Community Design Regulation creates a powerful instrument for corporations. Aggressive registration of questionable designs followed by summary injunctions seeking a European ban is an effective technique for eliminating competition.

In the case of abusive procedures, there is little in the way of compensation for victims if the design is subsequently invalidated. This current state of affairs may limit healthy competition and place a brake on innovation in the European Community market.

Books for review in JIPLP

The following books have been offered to the Journal of Intellectual Property Law and Practice (JIPLP) for review.  If you would like to volunteer to review one of these titles, please email Sarah Harris at Oxford University Press at sarah.harris@oup.com by Sunday 4 December and let her know your particular interest or expertise in the subject that would qualify you to tackle the task. After that date, you will receive either confirmation that your offer to review has been accepted or a grateful acknowledgement of the fact that you have offered, even though the review has been given to another. Suitably qualified volunteers to review who are unsuccessful will be given priority when next they request to review a book.

JIPLP is committed to making sure that books which are sent for review are actually reviewed, so please do not volunteer to review one of the titles unless you are genuinely prepared to deliver.  If you do not review the book, you will be asked to return it so that it can be sent to another reviewer. This policy is not intended to make life hard for reviewers, but rather to give a better deal to publishers and authors who depend on reviews as a means of drawing the attention of their works' intended readers and purchasers -- and who also benefit from even critical feedback.

The books on offer are as follows:

National Developments in the Intersection of IPR and Competition Law: from Maglite to Pirate Bay
Edited by Hans Henrik Lidgard.
Hart Publishing, Oxford.
Publication date: May 2011 400pp hbk 9781841139449 £55.00
More information concerning this title is available here 

Intellectual Property, Competition Law and Economics in Asia
Edited by R Ian McEwin.
Hart Publishing, Oxford.
Publication date: October 2011 368pp hbk 9781849460873 £75.00
More information concerning this title is available here 


Refusals to License Intellectual Property: Testing the Limits of Law and Economics
Ian Eagles and Louise Longdin.
Hart Publishing, Oxford.
Publication date: December 2011 272pp pbk 9781841138732 £65.00
More information concerning this title is available here

Handbuch des Fachanwalts Informationstechnologierecht
Michael Lehmann and Jan Geert Meents
Carl Heymanns Verlag
2. Auflage 2011. 1708 Seite(n), gebunden.
lieferbar. EUR 168,00. ISBN 978-3-452-27399-4
More information concerning this title is available here

Die europäische Patentanmeldung und der PCT in Frage und Antwort
Gerard Weiss and Wilhem Ungler
Carl Heymanns Verlag
8. Auflage 2011. 478 Seite(n), gebunden.
ISBN 978-3-452-26819-8. sofort lieferbar EUR 118,00
More information concerning this title is available here

Electronic Communications Law: Competition & Regulation in the European Telecommunications Market (second edition)
Paul Nihoul and Peter Rodford
Oxford University Press.
More information concerning this title is available here


Know-how-Schutz in Deutschland zwischen Strafrecht und Zivilrecht - welcher Reformbedarf besteht?
Björn Helge Kalbfus
Carl Heymanns Verlag
1. Auflage 2011. 424 Seite(n), kartoniert
ISBN 978-3-452-27597-4. EUR 114,00
More information concerning this title is available here

Bits and pieces

By now, all subscribers to the print edition of the November 2011 issue of JIPLP should have received their copies. If you've not yet received yours, you can check the contents here and see what you're still missing. Incidentally, some 20 items are available on JILP's Advance Access service while they await their paper publication dates.


Some of our editorial board members have been on the move.  Newly-appointed Andrew P. Bridges is now with Fenwick & West, San Francisco, California (you can email him here), while Neil J. Wilkof, who has been on the editorial board since the journal's inception, is now of counsel to Dr Eyal Bressler & Co., Ramat Gan, Israel (you can email him here).


Notice to all prospective authors: please, please, PLEASE -- when submitting articles for publication, do try to bear in mind the fact that JIPLP has a house style. While we try to be as flexible as possible and want to help our authors gain the publication of their submissions, we have to bear in mind the interests of our readers too.  In particular:

  • While authors rejoice in the publication of longer articles, most readers prefer shorter ones. If your subject matter is too long for an article 7,500 words or thereabouts, ask whether you actually have two separate articles on your hands.
  • JILP's footnotes should appear at the bottom of each page, not at the end of the article. They should refer to sources cited in an article and should not be bibliographic exercises in scooping up all the articles you've found on Google.
  • If you are writing on a topic which is tangential to IP but nonetheless of importance to it, spell out its relevance to JIPLP readers. Any article which contains no mention of the words "intellectual property" or of any specific IP right will be rejected since it is unfair to expect subscribers to a quality specialist journal to read through an apparently irrelevant piece in order to work out why it should be of interest or importance to them.
  • There has in recent months been a disconcerting trend towards the inflation of credits. Whereas formerly an author might acknowledge support from a research assistant, a colleague, a professor or a funding body, the credits are starting to read like Oscar acceptances. If this continues, I shall consider the launch of a fresh website on which authors can gratefully praise their partners, their pets, their cars and anything else that occurs to them. These items would link back to the original JIPLP article, in the event that the reader was curious enough to want to read it.

Harmony with the rest of the world? The America Invents Act

Author: Toshiko Takenaka, Professor of Law and Director, CASRIP, University of Washington

The America Invents Act, 16 September 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr175, first published online: November 11, 2011

President Obama has now signed the America Invents Act (AIA) into law, following a process which began when Congress and US industry first sought to overhaul the US patent system in 2004 and which draws US practice closer to the patent laws of the rest of the world than has previously been the case.

Legal context

During discussions to review patent infringement remedies, US industry was increasingly divided in their views with respect to a grant of injunction and adequate damages to compensate infringement. With the development of case law to resolve the different views (see eBay Inc. v MercExchange, LLC, 126 S. Ct. 1837, 164 L. Ed. 2d 641, USPQ2d 1577 (US 2006), Lucent Techs. v Gateway, Inc., 580 F.3d 1301, 92 USPQ2d 1555 (Fed. Cir. 2009), the industry was finally able to reach an agreement for all controversial issues in patent reform and convince Congress to pass a reform bill (see HR 1249 (AIA), 112th Congress: 2011–2012 (here)). However, the terms of America Invents Act represent a lot of compromises between competing interests of different sectors of US industry, including large multinational firms, universities, and non-profit research labs and independent inventors, which will lead to a lot of uncertainty for US courts and the US Patent and Trademark Office (USPTO) as to how to interpret these terms.

Facts and analysis

Here are the most important aspects that will affect interests of European patent owners for their patent procurement and enforcement in the USA.

First-inventor-to-file (FITF)

The patent community worldwide has been excited by the news that the USA has finally adopted the first-inventor-to-file (FITF) system (AIA, section 3) that US lawyers describe as a first-to-file system to join the rest of the world for patent harmonization. However, there is still a big question mark as to whether the USA gives priority between two independent and identical inventions based on the date of filing. Many view the novelty and priority under the AIA as the first to publish in which the first to invent is established only through a disclosure.

Prior art (AIA, section 3)

New section 102(a) is comparable to EPC Article 54 in defining an invention which is part of the state of art before the effective filing date. It not only lists a broad definition of such invention, an invention which is available to the public as provided in EPC Article 54(2), but also examples of such inventions, an invention being patented, described in a printed publication, in public use or on sale. These examples are copied from the current patent statute and are associated with the peculiar interpretation of these examples based on the first-to-invent policy. For example, ‘public use’ includes an inventor's own secret but commercial use (Metallizing Eng'g Co. v Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 517–8 (2d Cir. 1946)) excludes experimental public use (City of Elizabeth v American Nicholson Pavement Co., 97 US 126, 134–5 (1877)). Because US courts usually retain an interpretation of the term through its case law, unless the interpretation is expressly repealed by Congress, it is likely that US courts would interpret the definition of the state of art under the AIA differently to that of the EPC, Article 54. Despite this ambiguity, the AIA has removed the geographical limitation with respect to public use and sale and has thus harmonized with the EPC and Japanese Patent Act (JPA) in adopting worldwide novelty.

A new section 102(a) also provides a prior right which is comparable to the prior art under EPC Article 54(3), an invention described in a patent or patent application pending at the USPTO, to constitute the state of art if the patent application is filed before the effective filing date of the claimed invention under examination as long as the application is published after 18 months from the effective filing date or upon an issuance of patent (some US patents are not subject to 18-month publication, according to 35 USC 122(b)(2)(B)). Because the effective date is defined to include a foreign priority date under the Paris Convention and the PCT filing date, the AIA expressly repeals the Hilmer doctrine (from In re Hilmer, 359 F.2d 859, C.C.P.A. 1966) and gives the patent a defeating effect as of the priority date. Thus, the AIA's prior right provision is in line with the EPC as well as the JPA in giving the patent a defeating effect as of the priority date. However, it differs from the EPC and JPA by making the prior right reference available for not only novelty but also non-obviousness. Unlike the EPC, a prior right reference does not apply to applications which name the same inventor(s) or are owned by the same person or subject to an obligation of assignment to the same person to avoid the self-collision problem. This approach is in line with the JPA.

Grace period (AIA, section 3)

Contrary to the perception of US lawyers that FITF is a first to file, FITF is in fact a revised version of a first to invent. The definitions and underlying policy of disclosures excluded from the state of art make clear that the AIA still follows a first-to-invent system, although the period that the inventor can rely on the first to invent is limited to the 12 months from the filing date and the evidence to establish the first to invent is limited to a disclosure.

The new section 102(b) is comparable to EPC Article 55 in defining a disclosure of an invention which is removed from the state of art. The grace period, to take advantage of this exception to remove disclosed inventions, is 12 months and thus twice as long as the grace period under the EPC and JPA. The scope of inventions removed from the state of art is much broader than that of the EPC. Section 102(b) removes two classes of disclosed inventions from the state of art. The first class includes inventions which are disclosed by an inventor, joint inventor, or a third party who obtained the invention directly or indirectly from the inventor. Removing this class of disclosures is familiar within the first-to-file world because these disclosures are also excluded from the state of art under Article 9 of the Draft Substantive Patent Law Treaty (World Intellectual Property Organization, Draft of Substantive Patent Law Treaty, Article 9 (here).

The second class of inventions is most controversial because of the complexity and ambiguity in defining the class. The definition reads: ‘the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor, a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor’ (§ 102(b)(1)(b)). US lawyers and academics read the definition to remove from the state of art any disclosure of an invention after the first disclosure which falls into the first class as long as the inventor files an application within the 12-month grace period regardless of such disclosure made by another inventor who independently developed the same invention. In other words, the definition of second class should read to give priority based on the date of disclosure. This view is foreign to the first-to-file world, where a disclosure gives rise only to a patent-defeating effect. However, US lawyers who are trained in the first-to-invent world view the disclosure as evidence of invention which gives rise to priority for obtaining a patent as well as the patent-defeating effect. This interpretation is supported by some discussions in Congress where a sponsor of the AIA bill emphasized the protection of an inventor by giving the priority based on his or her disclosure (22 June 2011, H4420-4452 (here)).

The first-to-file trained lawyers would read the definition in line with the grace period provisions under the non-prejudicial disclosure under EPC Article 55, JPA Article 30, or Article 9 of the Draft Substantive Patent Law Treaty. For them, these provisions should read to remove from the state of art only certain types of disclosures by the inventor or derived from the inventor. This is because the grace period is an exception to the first to file and covers only minimum acts of inventors. In contrast, under the AIA, the grace period is an exception to the first to invent in barring inventors from obtaining a patent after 12 months from the filing date. That the AIA follows a first-to-invent system is further confirmed in that the subject matter resulting from both classes of disclosures is prevented from constituting a prior right. Non-prejudicial disclosures are not exempted from the first-to-file principle under either the EPC or the JPA.

Accordingly, ‘disclosure’ plays an important role in establishing the priority. However, the AIA does not include any definition of disclosure. Although the ‘disclosure’ should at least exclude a confidential sale and secret use, a non-confidential commercial offer of an invention or a public use of an invention may constitute a disclosure. The AIA does not suggest what degree of public access is necessary in order to rise to disclosure for establishing a priority. Because the FITF provisions will apply to applications with effective filing dates after 16 March 2013, we have to wait for a long time to determine how the US courts will interpret ‘disclosure’.

Derivation procedure (AIA, section 3)

Interference proceedings that determine priority based on the first to invent are restructured as derivation proceedings. The new proceedings will determine whether an invention of an application or a disclosure during the grace period is derived from the applicant. There is no proceeding to determine priority based on disclosures during examination if competing applications claim early disclosures during the grace period to establish the priority. Once a patent is granted, a first to disclosure may use the new post-grant review for challenging the priority.

Prior user rights (AIA, section 5)

The AIA will expand the scope of inventions to which a defence of infringement based on a prior use of an invention applies. Currently, a defence based on prior use is available only with respect to a method of doing or conducting business (see 35 USC §273). Under the AIA, the defence will be available for a process, a machine, manufacture, or composition of matter used in a manufacturing or other commercial process regardless of the field of technology. A substantial commercial use of the invention must be made at least one year before the earlier of either the effective filing date or the first disclosure of the invention claimed in the patent against which a defence is asserted. However, this defence is not available if the patent against which this defence is asserted was owned or to be subject to an obligation of assignment to universities at the time of invention. This defence will apply to any patent issued after 16 September 2011.

Multiple proceedings for challenging validity (AIA, section 6)

The AIA makes the US patent system complex and unique in offering multiple options for challenging patent validity at the USPTO in addition to invalidity challenge options at US courts. The AIA will provide three inter partes proceedings:
  • post-grant review;
  • inter partes review; and
  • a special post-grant review for business methods.
The post-grant review and the special post-grant review are new inter partes proceedings in contrast to the current inter partes reexamination which will be renamed as the inter partes review with some important revisions. The ex parte reexamination will remain as it is with a very minor change and interference proceedings. A comparison of the four proceedings is provided in the table below [If your screen shows only a partial version of the table, click it and you should be able to read it in its entirety].