Wednesday, 31 October 2012

The scope of COPE

The Journal of Intellectual Property Law & Practice (JIPLP) belongs to COPE -- the Committee on Publication Ethics, which gives guidance on many sensitive issues regarding the relationship between a journal's publishers, contributors, peer reviewers, readers and the public at large.  From time to time, COPE is concerned with issues that have an intellectual property dimension to them, the most obvious of which are plagiarism and failure to acknowledge authorial contributions.

JIPLP reproduces below a case report which reflects the typical scope of COPE's role in identifying, resolving (if possible) and promulgating issues for the wider benefit of the publishing community, its users and consumers:
ANONYMISED TEXT OF THE CASE:  
A director of an institute in France has expressed concern about a paper published in our journal. One of the authors (not the corresponding author) of the paper, person A, visited his laboratory in France for 5 months in 2009 to carry out some work. The director says that some methods used and results obtained in his laboratory have now been included in the paper without his knowledge or permission. Researchers from another institute in a different country are co-authors of the paper, and the corresponding author is someone from that institute. The director in France acknowledges that the experiments could have been repeated in conjunction with this other group, but says that it is not very ethical to work in this way. 
I would be grateful for any advice on how to proceed in this matter. We have replied saying that we would contact COPE for advice. 
In 2010, the editor-in-chief of another journal contacted the French group about a paper submitted by person A which included several members of the French laboratory as co-authors without their knowledge and permission. That editor-in-chief was concerned about apparent falsification of data by manipulation of a gel photo, which the French group were able to confirm. They contacted person A and the departmental head but have had no response. 
ADVICE:  
The editor provided additional information that there was no formal contract between person A and the laboratory in France, and the director of the laboratory has replied that none of the data have been published previously. 
The advice from the Forum was to contact person A, relaying the concerns expressed by the French institute, and ask for an explanation. If there is no response or an unsatisfactory response from person A, then the editor may consider contacting person A’s institution and asking them to investigate the matter. In the meantime, the editor may like to publish an expression of concern if an investigation is ongoing. 
However, as the director acknowledges that the experiments could have been repeated elsewhere and if he cannot prove that the published results were actually produced in his laboratory, it may be difficult for the journal to pursue this further. Further advice was for the editor to encourage the French institute to take up the matter with person A and her current institute. Or the French institute could contact the corresponding author of the paper, and then he/she should then be responsible for putting together a response on behalf of all authors. If it turns out to be a simple matter of ‘scientific discourteousness’, a letter exchange would be a good way to publicly apologise. 
Regarding the second paper, involving the other journal and possible falsification of the data, this should probably be set aside for the moment, in the interests of giving person A the benefit of the doubt. It is the other journal’s responsibility to pursue this matter. 
RESOLUTION:  
On-going
So far as I can ascertain, only two IP journals are members of COPE, the other being the Journal of World Intellectual Property.  I do hope that others will soon follow.

Sunday, 28 October 2012

Football Dataco v Yahoo! An article of immediate interest

"Football Dataco v Yahoo! Implications of the ECJ judgment" is the title of an article by David Rose and Nina O'Sullivan (both of SJ Berwin) which has just been published online in the Journal of Intellectual Property Law & Practice (JIPLP). According to the abstract:
"This article considers the European Court of Justice's (ECJ) decision in Football Dataco v Yahoo! on whether football fixture lists are protected by ‘database copyright’ under the Database Directive (following earlier ECJ decisions holding that such lists are not protected by the sui generis database right).

A ‘database’ will only qualify for copyright protection under the Directive where the selection or arrangement of the data which it contains amounts to an original expression of the author's creative freedom. Accordingly, the ECJ has confirmed that any intellectual effort and skill in creating the data are irrelevant.

Further, the originality requirement will not be satisfied when the setting up of the database is dictated by technical considerations, rules or constraints leaving no room for creative freedom.

The decision is also a further example, in a line of cases starting with Infopaq, of the ECJ's emphasis on creative endeavour, with potential implications for copyright subsistence beyond the specific species of copyright that are the subject of harmonized rules (such as database rights and software copyright)".
The Court of  Appeal for England and Wales, which referred this case to the ECJ, will be hearing the case further on 12-13 November and, while it's not yet know when judgment might be expected, those in the know believe that it will be sooner rather than later -- so any reader who would like to second-guess how that Court will apply the ruling is advised to read this article pretty soon.

Online subscribers can access the article immediately here, while non-subscribers can purchase short-term access to it.

Thursday, 25 October 2012

Secondary Protection for Innovations: The first JIPLP/GRUR Int seminar

The Journal of Intellectual Property Law & Practice (JIPLP) is thrilled to announce the first tangible results of its cooperation with leading German intellectual property periodical GRUR Int.  The two publication teams have already exchanged editorial content and the fruit of this cooperation will become apparent in the January 2013 issues of each.

The second tangible result of this international cooperation is the promotion of two celebratory seminars, one of which is being organised by JIPLP in London, the other being organised by GRUR in Munich.

Details of the London seminar are as follows:
Title: Secondary Protection for Innovation in Germany: Problem or Solution? 
Date and time: Tuesday, 22 January 2013 
Venue: the London office of Freshfields Bruckhaus Deringer LLP, 65 Fleet Street, London EC4Y 1HT. 
Programme
3.30pm: Registration  
4.00pm: Welcome from the hosts (Freshfields Bruckhaus Deringer LLP) 
4.05pm: Welcome from JIPLP (Jeremy Phillips, JIPLP editor-in-chief and IP consultant, Olswang LLP)  
4.10pm: Secondary protection of innovations in Germany: what are the advantages? (Wolrad Prinz zu Waldeck und Pyrmont, Freshfields Bruckhaus Deringer LLP)  
4.40pm: Secondary protection of innovations in Germany: is there another side to the story? (Karsten Königer, Harmsen Utescher) 
5.10pm: Panel discussion, followed by questions from the floor. 
Panellists who have already agreed to participate are Ian Karet (Linklaters LLP), Christopher Stothers (Arnold & Porter LLP), Darren Smyth (EIP) and Timo Minssen (University of Copenhagen), respectively representing expertise in litigation, competition issues, patent drafting and academia. 
6.00pm: Chairman’s closing summary, followed by refreshments. 
The seminar will probe the scope of protection accorded to innovations by the German Gebrauchsmuster, its advantages and disadvantages, its attractiveness to Small and Medium-Sized Enterprises ('SMEs') and its possible role as a model for adoption elsewhere in Europe. Regard will also be had to the experiences of other jurisdictions in which innovation patents, utility models and petty patents are available. 
Registration: all are welcome to attend and there is no registration fee. 
 Training points: it is hoped that CPD points will be awarded for attendance at this event. Further information will be provided once it is available.
To attend: please email Jeremy Phillips here, with the subject line "Secondary Innovation", stating your name and affiliation. Your email will be acknowledged and there are no further formalities. If you subsequently find that you are unable to attend, please let us know so that your place can be allocated to someone else.

Wednesday, 24 October 2012

@JIPLP: the journal that tweets

In keeping with its commitment to engaging with the intellectual property community wherever the latter might be found, the Journal of Intellectual Property Law & Practice JIPLP) has now established a presence on the social media service Twitter.

The function of JIPLP on Twitter is not intended to be either social or trivial: rather, it is planned as a means of bringing the journal's editorial and production teams, readers, subscribers and contributors more closely and speedily together.  This in turn should result in the commissioning of legal content that is more relevant to readers' needs, the more effective identification of prospective authors, a better balance in the geographical spread of features and the instant promulgation of information concerning commercial and legal developments  that are directly related to current articles and Current Intelligence notes.

This is something of an experiment. I am not aware of any other major subscription-based professional intellectual property law journal that maintains a presence on the Twittersphere, and indeed there may not be any others.  If it works, we will all be its beneficiaries. If it does not, we will at least have learned from the experience.

If you have a Twitter account you can follow JIPLP at https://twitter.com/JIPLP

If you would like to take a look at Twitter's guidance on the use of its brand and trade marks, click here.

Tuesday, 16 October 2012

Peer reviewers: time for publicity?

The Journal of Intellectual Property Law & Practice (JIPLP) is a refereed journal: every article which it publishes has been through the hands of a peer reviewer who has examined it in terms of content, structure and relevance before the draft is allowed to go into production. As many authors can testify, it is sometimes necessary to amend or rewrite an article two or three times before it is accepted. Some authors appreciate this process; a few have even footnoted expressions of gratitude for comments made by peers.  Others, particularly those whose hitherto successful writing experience has been with non-peered journals, are often less appreciative.

The contribution of the peer reviewers is an essential part of the publication process and, on the whole, this process has worked well. Many weak articles have been rejected at an early stage; others have been reconstructed and strengthened. Some very good articles have been turned down too, on account of their lack of obvious relevance to the journal's IP core, their extreme length or their lack of currency in fields of law and practice which move fast. On occasion, questions of lack of originality and even plagiarism have been raised. For all of this, JIPLP is extremely grateful.

JIPLP's computerised system for processing
peer reviews is more sophisticated than the
red-card/yellow-card system used by some
other legal journals ...
Like contributors, peer reviewers receive no remuneration for their efforts and tend to regard their work as a general contribution to the well-being of the IP community. Authors, however, enjoy the publicity and occasionally the celebrity or notoriety that comes from being associated with the polished product that appears in the journal, while peer reviewers remain anonymous, far from the public gaze and equidistant from both praise and blame.  Incidentally, some reviewers make a point of revealing their identities to authors and invite them to engage in discussion concerning their comments, but others feel more comfortable when they know that they can be honest in their appraisal of an article without having to face an author's wrath or indignation.

Following a recent discussion of the JIPLP production team, I would like to hear from peer reviewers, authors and readers as to whether they think it would be a good idea for each published article to give the name and details not only of the author but also of the peer reviewer (or occasionally reviewers) who approved it. This would give peer reviewers the opportunity to receive some public credit for their work -- and would also keep them on their toes in so far as poor articles would reflect as badly on the reviewers who recommended them as on the authors themselves.

Do please post your thoughts below or email them to me here.

Monday, 15 October 2012

Use of a Community trade mark in one EU Member State: is it genuine use in the Community?

Author: Niamh Hall (FRKelly, Dublin and Belfast)

Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV, Opinion of Advocate General Sharpston, 5 July 2012

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps159, first published online: October 11, 2012

The use of a Community trade mark in one Member State may not be sufficient to establish genuine use in the Community to show proof of use in an opposition or to defend a revocation action. It depends on how the market for the particular goods or services is defined.

Legal context

Hagelkruis applied to register the trade mark OMEL in the Benelux and was opposed by a firm of trade mark attorneys, Leno, on the basis of their Community trade mark registration for ONEL. Benelux trade mark law permits applicants to request proof of use of the earlier mark in an opposition. Hagelkruis as part of its defense of the application requested proof that the earlier Community trade mark registration had been put to genuine use for the services in question. Because it was a Community trade mark, the relevant territory in which genuine use was required to be proven was ‘the Community’. Leno submitted proof of use in relation to the Netherlands but declined to submit any proof of use in relation to the remainder of the Community. The Benelux Intellectual Property Office refused the opposition on the proof of use issue and Leno appealed this refusal to the Gerechtshof 's-Gravenhage (Regional Court of Appeal, The Hague). The question to be decided was whether this use in the Netherlands could constitute genuine use of the trade mark in ‘the Community’. The Gerechtshof 's-Gravenhage referred a number of questions to the Court of Justice of the European Union (ECJ) for guidance. This Opinion of the Advocate General (AG) will be taken into account by the ECJ in rendering its decision.

Facts

The facts of this case are sparse, being limited to the identity of the parties and the services in question, which are essentially legal services. Various matters were agreed by the parties, including the similarity of the marks and the services and the fact that the use shown by Leno would have satisfied the requirement for proof of use, had the earlier mark been a national registration. No details of the market in question or the specific use made of the mark by Leno were provided to the ECJ. This left the only outstanding issue to be the question of genuine use in the Community.

There has been much speculation as to whether the action was artificially created to address the issue. Leno is a firm of trade mark attorneys and is part of the Knijff Group of trade mark attorneys. It does appear that Leno has a genuine interest in the trade mark ONEL. Aside from this, that the situation is one of concern and interest to trade mark attorneys and owners. The AG appears to be satisfied that there is a real issue at stake, as were the seven Member States which submitted observations, so the point may be moot. Indeed, European trade mark attorneys have a venerable history of constructing appropriate test cases for troublesome issues, which perhaps reflects the prohibitive cost and risks of litigating such issues in commercial disputes rather than any innate mischievousness.

The questions which were posed can be paraphrased thus:
(1) Must Article 15(1) of Council Regulation 207/2009 (‘the CTM Regulation’) be interpreted as meaning that use of a Community trade mark within the borders of a single Member State is sufficient to constitute genuine use of that trade mark, given that, had it been a national trade mark, such use would have been regarded as genuine use in that Member State?
‘Is genuine use in one Member State always enough to show genuine use in the Community?’ to which the AG answered ‘no’. The AG based her conclusion on a statement in the ECJ decision in VITAFRUIT (Case C-416/04) that territorial scope of use is only one factor to be taken into account or genuine use. However, that decision dealt with sales to one customer only in a Member State and the conclusion may not necessarily translate to more extensive use in one Member State only.
(2) If Question 1 is answered in the negative, can the use of a Community trade mark within a single Member State as described above never be regarded as genuine use in the Community?
‘Is genuine use in one Member State never enough to show genuine use in the Community?’ to which the AG by implication answered ‘no’.
(3) If the use of a Community trade mark within a single Member State can never be regarded as genuine use in the Community, what requirements apply—in addition to the other factors—in respect of the territorial scope of the use of a Community trade mark when assessing genuine use in the Community?
‘If genuine use in one Member State is never enough to show genuine use in the Community, what needs to be shown?’—in response to which the AG referred to the market in the Community as a borderless internal market for the goods or services in question.
(4) Alternatively, must Article 15 of the CTM Regulation be interpreted as meaning that the assessment of genuine use in the Community should be carried out wholly in the abstract, without reference to the borders of the territory of the individual Member States (and that, for example, market share (product markets/geographic markets) should be taken as the point of reference)?
‘Is the assessment a Community-wide internal market assessment, without consideration of Member State borders?’—to which the AG answered by implication ‘yes’. The actual answers of the AG were as follows:
Article 15(1) … must be interpreted as meaning that (i) use of a Community trade mark within the borders of a single Member State is not, of itself, necessarily sufficient to constitute genuine use of that trade mark, but (ii) it is possible that, when account is taken of all relevant facts, use of a Community trade mark within an area corresponding with the territory of a single Member State will constitute genuine use in the Community.
Thus, genuine use in one Member State is not necessarily enough, and certainly not always enough, to show genuine use in the Community. Depending on the facts, genuine use in an area which happens to constitute one Member State might be enough in a particular case to show genuine use in the Community but this is not the test and it would be merely coincidental.
Genuine use in the Community within the meaning of Article 15(1) is use that, when account is taken of the particular characteristics of the relevant market, is sufficient to maintain or create market share in that market for the goods and services covered by the Community trade mark.
What is important is the relevant commercial market for the goods or services, considered in respect of the borderless Community internal market, and whether the use is sufficient to maintain or create market share in light of the particular characteristics of that commercial market.

Analysis

The questions referred in general terms to genuine use in the Community, without being limited to the context of proof of use in a national opposition. Therefore, the referring court and the AG were willing to deal with this as a topic equally applicable to proof of use in oppositions and revocation actions for non-use. The ECJ's approach is, however, open to speculation.

The issue of genuine use of a Community trade mark involves many nuances. Revocation for non-use is one the main methods of clearing the so-called ‘dead wood’ and of addressing the perceived problem of the cluttering of that register—a factor specifically discussed by the AG. As against this, any dilution of the principle that genuine use in one Member State is enough, could replace certainty with an element of doubt. To trade mark owners and attorneys, doubt equals risk and is to be avoided. If genuine use of a Community trade mark in one Member State does not suffice in all cases to show genuine use in the Community, it is likely that national business owners from the smaller Member States will be inclined to revert to filing national trade mark registrations.

The principle that genuine use in one Member State is enough to show genuine use in the Community dates back to the inception of the Community trade mark system. The questions posed by the referring court referred to the non-binding Opposition Guidelines of the Office of Harmonization for the Internal Market (OHIM) and Joint Statement No 10 by the Council and the Commission of the European Communities entered into the minutes of the Council meeting at which the CTM Regulation was adopted which stated: ‘The Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community’. At the time, there were only 10 EU Member States, and such a definitive statement was regarded as uncontroversial. There may also have been an element of seeking to ensure that the Community trade mark system was attractive to users and to create certainty in terms of its effect. As the Community trade mark system and European Union grow in tandem, the perceived problem of cluttering and the accession of many new small Member States mean that the principle is increasingly being called into question as to whether genuine use in one Member State justifies the Community-wide monopoly being maintained.

This change in attitude prompts the question as to whether Community trade mark owners who filed their trade marks in previous years have a legitimate expectation that genuine use in one Member State would maintain their registration. While not specifically referring to this question, the AG pointed out that a Community trade mark registration which is revoked for non-use can be converted into a national application in a Member State where there has been genuine use. However, this generally incurs additional fees and results in an application which must proceed through the usual national examination procedures and may be refused on absolute or relative grounds. Even if the national application is accepted, the applicant has no enforceable rights in the meantime. Whether damages can be claimed dating back to the effective date of the application also depends on national law. This can be particularly important as revocation actions often arise as a defense to an infringement action and there is thus a strong likelihood that such issues will occur when there is an infringement which requires urgent action.

The significance of how the market is defined will become paramount if the AG's Opinion is followed, akin to its importance in competition law. Markets can have different characteristics depending on language obstacles, transportation or investment costs or consumer tastes and habits. The extent of use which will suffice to establish genuine use will vary hugely from an expensive, niche product (eg armoured tanks) to a fast moving consumer product, to a product which has a very limited geographic appeal (eg powdered milk or the example given by the AG, Scottish deep-fried chocolate bars).

Practical significance

Ultimately, the impact of this case will depend on whether the decision of the Court of Justice of the EU follows the AG's Opinion and how it frames—or reframes—the answers to the questions. In general, a large majority of ECJ decisions follow the AG's Opinion but the percentage is much lower where controversial cases are concerned.

This particular issue merges political issues (are all Member States equal?) with implications for existing registrations which might be vulnerable to attack depending on the outcome. It also rows back on the encouraging impression given at the launch of the Community trade mark system in the Joint Statements that national trade mark holders could safely move to use of Community trade marks without fear of loss of rights. It could ultimately signify a move away from the Community trade mark system for trade mark owners with national rather than international businesses, if the AG's Opinion that Community trade marks are for those trading at Community level only is followed.

Tuesday, 9 October 2012

October JIPLP -- and editorial on 'cool' design rights

The October issue of the Journal of Intellectual Property Law & Practice (JIPLP) is available online from to subscribers to its electronic version -- but you don't have to be a subscriber to see the list of contents, which you can access here.

This month's Editorial is by Paul Joseph (partner, RPC):
'Cool' design rights 
The Oxford English Dictionary defines ‘cool’ as (among other things) ‘(1) fashionable, (2) moderately cold temperature and (3) unproblematic’. Even enthusiasts may hesitate to apply the term ‘cool’ to the intellectual property arena, but ‘coolness’ has been central to two recent decisions in the English courts that shed light on the complexities of registered design right protection across Europe.

The first decision was in the UK limb of the well-known dispute between Apple and Samsung, in which Samsung sought a declaration of non-infringement from the High Court for England and Wales that its Samsung Galaxy tablet computer did not infringe Apple's registered community designs for its own iPad tablets. The High Court examined the background design field and decided that, to the informed user, the Apple and Galaxy tablets were both members of the family of pre-existing thin, smooth-fronted tablet computers. What made the Apple design novel, and a valid design registration, was the extreme simplicity of its design (rather than the mere fact it was a ‘flat fronted’ tablet). On that basis, the Samsung Galaxy did not infringe. Although it appeared to share many design features with the Apple product, those features were common to the design field. It created a different overall impression on the informed user because it was ‘not as cool’ as the Apple design.

The second decision (handed down by the same judge a mere two weeks later) concerned a transparent bag for transporting wine bottles. The novel feature of the bag was that it was reinforced so that it could be filled with ice and so act as a ‘cool bag’ to chill the wine bottle inside. This novel purpose worked in the claimant's favour. Previous (almost identical) bag designs were deemed not to invalidate the community registered design for the cool bag, because those previous bags were designed for a different purpose (for carrying, rather than cooling). In respect of infringement, relatively wide protection was given because in the ‘new area’ of cool bags, even competing cool bags with small design differences would leave the informed user with the same overall impression.

The decisions are well reasoned and clear. And the consideration of how ‘cool’ the designs are, both in terms of a ‘fashionable’ look and feel and ‘cooling’ purpose were clearly appropriate considerations in these cases for considering the overall impression of the designs and so the validity and infringement arguments. Appropriate factors they may be, but stepping back from the legal arguments, the bigger picture is somewhat surprising. On the one hand an iconic, recognizable design in the high fashion, multi-billion euro computer market seems difficult to enforce, whereas a much more basic bag design can be used to carve out a niche in the wine cooling industry in which high-design seems less critical. To put the concern another way, it would have been hard to foresee these two outcomes at the outset. Tellingly, the judge in the Apple case expressly acknowledged that when ‘[he] first saw the Samsung products in this case [he] was struck by how similar they look to the Apple design when they are resting on a table’. It was only when the judged educated himself as to the mindset of the informed user that his views on that point changed.

Ironically, recital 21 to Community Design Regulation (6/2002) highlighted ‘greater legal certainty’ as one of the key advantages of registered designs. In fact (as implied by recital 18) it seems to be the registration system itself, that does not require substantive examination of applications, that can most correctly be called ‘certain’—in the sense that design registrations are easy to obtain and, once obtained (at least on the basis of the Apple case) are difficult to invalidate. Understanding the contours of the landscape for the effective enforcement of design rights is much more difficult and less certain. This is the case both in Europe as a whole and even more so in the UK where the position is complicated by the existence of overlapping UK registered and unregistered design rights, leading Sir Robin Jacob to comment recently in response to a government paper that ‘… nobody in their right mind would have such a complicated system.’

As things stand, the third meaning of ‘cool’, unproblematic, is unlikely to be a term many would apply to design rights in Europe.

Friday, 5 October 2012

Parallel imports and summary judgment: Oracle v M-Tech in the Supreme Court

Author: Christopher Stothers (Arnold & Porter (UK) LLP and JIPLP editorial board member)

Oracle America, Inc (formerly Sun Microsystems, Inc) v M-Tech Data Ltd and Stephen Lawrence Lichtenstein [2012] UKSC 27, 27 June 2012

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps157, first published online: September 28, 2012

The Supreme Court of the United Kingdom has restored a summary judgment against a parallel importer of genuine goods from outside the European Economic Area (EEA) by striking out competition and free movement ‘Euro-defences’. This allows brand owners to enforce more efficiently their right to object to the parallel importation of such goods.

Facts

Oracle (formerly Sun Microsystems) is a major manufacturer of computer systems, workstations and related goods and services under the ‘Sun’ trade mark. It sells its products through a network of authorized resellers. However, some unauthorized brokers and dealers also deal in these products in a ‘secondary’ or parallel distribution chain. M-Tech Data is one such unauthorized supplier.

M-Tech imported 64 disc drives from the USA to the UK and sold them to KSS Associates. Those disc drives were genuine products which bore the ‘Sun’ trade mark. However, the disc drives had never been put on the market in the European Economic Area (EEA) by Oracle or with Oracle's consent. Instead, they had been sold in Chile, China and the USA. Oracle therefore regarded them as unlawful parallel imports to the EEA under the doctrine of Community-only exhaustion, and brought an action for trade mark infringement in the High Court. Oracle then applied for summary judgment to avoid the need for the cost of disclosure, evidence and trial on the basis that M-Tech had no realistic prospect of defending the infringement action.

M-Tech resisted, arguing that Oracle should not be permitted to exercise its trade mark rights because (i) to do so would be contrary to the free movement of goods within the EU under Articles 28–30 EC (now Articles 34–36 TFEU) and (ii) such exercise was connected to anti-competitive distribution agreements under Article 81 EC (now Article 101 TFEU).

At first instance in the High Court (Sun Microsystems v M-Tech Data [2009] EWHC 2992 (Pat), discussed in Yee Fen Lim ‘The Future of Copyright Law’ (2010) 4(4) JIPLP 297, 298), Kitchin J granted summary judgment for Oracle, finding no real prospect of success of either defence.

In relation to free movement of goods, M-Tech had argued that the goods sold inside and outside the EEA looked identical, and that it was impossible for unauthorized brokers and dealers to determine whether any individual Sun product had been put on the market in the EEA by, or with the consent of, Oracle (although Oracle could do so from its internal database). As a result of that uncertainty, argued M-Tech, enforcement of Oracle's rights would restrict the free movement of those goods which had been put on the EEA market. The court assumed for the purposes of determining the application that these facts could be proven at trial. Nevertheless, it held that Article 7 of the harmonizing Trade Mark Directive gave Oracle the absolute right to rely on its trade mark rights to object to such parallel imports from outside the Community; that this was not contrary to Articles 28–30 EC. However, the injunction was limited by providing that M-Tech could sell goods without breaching the injunction provided that (i) M-Tech gave Oracle the serial and part numbers of goods it intended to sell and (ii) Oracle did not say within 10 days that the goods had not been put on the market in the EEA (a similar limitation of the scope of injunctive relief was applied in Sun Microsystems v Amtec [2006] EWHC 62 (Ch)).

In relation to competition, the court's reasoning was much briefer, concluding that there was no nexus or connection between the distribution agreements and the enforcement of trade mark rights which could render the rights unenforceable.

The Court of Appeal unanimously reversed this decision, with Lady Justice Arden giving the leading judgment (Oracle America v M-Tech Data [2010] EWCA Civ 997, discussed in [2011] JIPLP 610). In relation to free movement of goods, she held that there was a real prospect of establishing that Article 7 of the Trade Mark Directive must be interpreted by reference to Articles 28–30 EC and that this might preclude enforcement of trade mark rights on the pleaded facts. She also accepted that there was an arguable case that enforcement of trade mark rights in the circumstances would be an abuse of rights. Similarly, more briefly, she found that there was an arguable case that there was a sufficient connection or nexus for the purposes of Article 81 EC. She indicated that there would be a strong case for the trial court to make a reference to the European Court of Justice if M-Tech was able to prove its allegations, as the points were not acte clair as a matter of EU law.

However, the Supreme Court gave permission to appeal on 10 February 2011, and on 27 June 2012 unanimously overturned the Court of Appeal and restored the summary judgment. Lord Sumption regarded it as fundamental that, in relation to free movement of goods, the goods in question had not been put on the market in the EEA by or with the consent of Oracle. He noted that the injunction granted by Kitchin J had been carefully limited to such goods (as in Sun v Amtec). Accordingly, M-Tech could not complain of a restriction on the free movement of goods in relation to the 64 disk drives or to any goods subject to the injunction, as such goods had not been put on the market in the EEA. If Oracle's failure to confirm the product history restricted the free movement of goods which had been put on the market in the EEA then M-Tech might have a remedy under the free movement provisions in relation to those goods, but that was irrelevant (and did not provide a defence to trade mark infringement) in relation to goods which had been put on the market outside the EEA. Similarly, in relation to the competition defence, Oracle's enforcement of its trade mark rights and refusal to confirm the history of goods was not the subject, the means or the result of any anti-competitive agreement.

Analysis

The Supreme Court explicitly recognized the important policy issues arising in relation to the use of free movement and competition ‘Euro-defences’ in paragraph 7 of its judgment:
‘Euro-defences’ of this kind have been deployed by alleged infringers of intellectual property rights for many years, and the English courts have varied in the robustness with which they approach them. The dilemma is that litigation devalues intellectual property rights, by increasing the cost and delay associated with their enforcement. It may also serve to confer on the alleged infringer a temporary immunity or an improvement of his bargaining power in settlement negotiations, to which he will turn out not to be entitled. The effect can often extend beyond the parties or transactions in issue, to many other cases in which similar questions might be raised. These factors mean that defences like the present one must be scrutinised with some care, even if that requires a certain amount of analysis. On the other hand, a defendant must be allowed to go to trial if it has raised a triable issue of fact which is relevant in point of law. For obvious reasons, this is especially important when the case is founded on fundamental principles of the European Union such as the free movement of goods and undistorted competition …
Here the Supreme Court was able to solve this dilemma by determining that the facts raised in the ‘Euro-defences’, even if proved, would not provide a defence to trade mark infringement in relation to the goods in dispute. This division of the issues seems entirely correct as a matter of logic and rightly enabled the Supreme Court as the court of final instance to find that the issues were ‘entirely clear’ (acte clair) and so did not need to be referred to the ECJ (despite the unanimous verdict of the Court of Appeal that the points were not acte clair).

However, as the Supreme Court acknowledged, its ruling leaves open the question whether the same facts could form the basis of separate claims under Articles 34–36 and 101 TFEU (and, implicitly, what the implications would be for the conduct of the action if these were raised as counterclaims rather than defences). The risks to a parallel trader of pursuing such claims are considered further below.

In addition, the Supreme Court also considered two other points in passing which are, with respect, incomplete summaries of the legal position as laid down by the ECJ.

First, in paragraphs 12–15, the court found that Articles 5 to 7 of the Trade Mark Directive constituted a ‘complete harmonisation of the rules relating to the rights conferred by a trade mark’ (following the ECJ in Case C-355/96 Silhouette [1998] ECR I-4799, para 25). The court suggested that this meant that these Articles of the Trade Mark Directive superseded Articles 34–36 TFEU. This appears correct in relation to the issues in question, but should not be interpreted more broadly. For instance, the Articles of the Treaty still have application in relation to the repackaging of pharmaceuticals where the brand name is changed. The rules in Article 7 only provide for exhaustion in a trade mark where goods are put on the market ‘under that trade mark’. However, if a parallel importer changes the trade mark to that used in the importing Member States, exhaustion under Articles 34–36 remains possible (see Case C-379/97 Pharmacia v Paranova [1999] ECR I-6927, para 28).

Secondly, in paragraph 21, the Supreme Court noted that ‘it has been held that a trade mark proprietor may not object to the removal of identification codes or marks which would reveal the trader's sources of supply to the trade mark proprietor and thereby make it impossible for the trade to serve that market at all’ (citing Case C-349/95 Loendersloot v Ballantine [1997] ECR I-6227, para 40). However, in that case the court also indicated the trade mark owner may object to removal where the codes are necessary to comply with a legal obligation ‘or to realise other important objectives which are legitimate from the point of view of Community law, such as the recall of faulty products and measures to combat counterfeiting’ (paras 41–43). More recently, the court has confirmed that the trade mark owner may object to resale of products where the information has been removed where such removal harms the image of the products (see Case C-324/09 L'Oréal v eBay (12 July 2011), paras 78–83, following Advocate General Stix-Hackl in Joined cases C-414/99, C-415/99 and C-416/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691, points 120 and 121).

Practical significance

This interesting decision of the Supreme Court will be welcomed by brand owners. It remedies the problems which arose from recent judgments of the Court of Appeal reinstating ‘Euro-defences’ and supports the ability of the High Court to grant summary judgment against parallel imports from outside the EEA in the face of such weak defences, avoiding the time and expense of taking those defences to trial.

Although the judgment is likely to discourage imports from outside the EEA generally, brand owners would be well advised to consider how they can prove that goods were first put on the market outside the EEA. Ideally, importers should be unable to prevent such proof without causing such damage to the goods or packaging that the reputation of the goods would also be damaged. Assuming such proof is possible, brand owners should now be much more willing to start proceedings against parallel importers and then to apply for summary judgment in the face of any weak defences which may be raised.

Equally, companies which (whether deliberately or unwittingly) import or sell in the UK goods which have been put on the market outside the EEA are now in a far more difficult position than previously. The value for settlement negotiations of raising a free movement or competition defence is now substantially reduced, unless it can be shown to be sufficiently related to the infringing act to constitute a defence. In the light of the Supreme Court's ruling, this seems unlikely in the majority of cases.

To the extent that there are genuine restrictions on the ability of traders to engage in parallel import within the EEA, whether due to the risk of accidentally trading in goods from outside the EEA or otherwise, the correct remedy is to seek relief under the competition Articles of the Treaty (or, potentially, the free movement Articles). However, traders will need to consider the merits of any such action very carefully, bearing in mind the high cost of such actions and the fact that the winning party before the English courts can normally recover its reasonable costs from the losing party. In addition, there is a real possibility that the trader will be asked to provide security for the brand owner's costs (see eg Chemistree Homecare v Roche Products [2011] EWHC 1579 (Ch), where security of £450,000 was ordered). Capping of cost recovery in private competition cases has been mooted in the UK Government's recent consultation (Department for Business Innovation and Skills, ‘Private Actions in Competition Law: a Consultation on Options for Reform’, launched on 24 April 2012 with responses by 24 July 2012), but the Government will undoubtedly be keen to ensure that the costs recovery rules (like the summary judgment procedures) still discourage weak claims.

Thursday, 4 October 2012

Books for review

Another batch of books has been received for review by the Journal of Intellectual Property Law and Practice (JIPLP).  If you'd like to review one, please contact Sarah Harris at Oxford University Press by email here, by not later than Tuesday 9 October.  If you have not yet reviewed a work for JIPLP, please let Sarah know why you feel qualified to review the title in question, providing biographical details if necessary.  The books now available for review are these:

Unfair to Genius: The Strange and Litigious Career of Ira B. Arnstein
Author: Gary A Rosen
Publisher: Oxford University Press
"The long and tortured career of Ira B. Arnstein, "the unrivaled king of copyright infringement plaintiffs," opens a curious window into the evolution of copyright law in the United States. As Gary A. Rosen shows in this frequently funny and always entertaining history, the litigious Arnstein was a trenchant observer and most improbable participant in the transformation of not just copyright, but of American popular music itself. ".
Further information concerning this publication is available from its web page here.

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Ambush Marketing and the Mega-Event Monopoly
Author: Andre M Louw
Publisher: Springer
"This is the first book to focus critically on the legitimacy of legal responses to ambush marketing. It comprehensively examines recent sports mega-events and the special laws which combat ambushing. The approach of the book is novel. It does not blindly accept often-touted truisms regarding the illegitimacy of ambushing. The author argues that the debate concerning the ethics and legality of ambushing should be revisited, and that lawmakers have simply gone too far".

Further information concerning this publication is available from its web page here.

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Practitioners' Guide to Intellectual Property Law
Editorial team: Adams & Adams (South Africa)
Publisher: LexisNexis
ISBN is: 9780409050226
This book definitely exists, but we have so far been unable to find a web page for it.