An obvious ‘Comity of Errors’: Court admonishes motives of Applications Judge, but agrees with the result

Authors: Emir Crowne (Associate Professor, Faculty of Law; Barrister, Solicitor and Registered Trade-mark Agent, University of Windsor) and Niousha Ghomashchi (Law Student, Faculty of Law, University of Windsor)

Apotex Inc v Allergan Inc, 2012 FCA 308, Federal Court of Appeal, Canada, 23 November 2012

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt027, first published online: March 21, 2013

The Federal Court of Appeal upheld a prohibition order sought by Allergan preventing the Minister of Health from issuing a Notice of Compliance to Apotex but admonished the Applications Judge for granting the prohibition order simply to ‘further his desire to clarify the jurisprudence’ (Apotex, para 6).

Legal context

The initial proceeding before the Applications Judge (2012 FC 767) was brought under the Patented Medicines (Notice of Compliance) Regulations, SOR 93-133, this being a summary application for judicial review initiated by the applicant (the patent holder) who seeks to prohibit the Minister of Health from issuing a Notice of Compliance. Once the generic manufacturer has presented probative evidence supporting its allegations of anticipation and obviousness (in this instance), the burden of proof is on the applicant to establish, on a balance of probabilities, that those allegations are not justified.

Subsection 5(1) of the Regulations sets out the requirements for a ‘generic’ drug company (ie a ‘second person’) to obtain a notice of compliance from the Minister of Health for approval of its generic drug:

If a second person files a submission for a notice of compliance in respect of a drug and the submission directly or indirectly compares the drug with, or makes reference to, another drug marketed in Canada under a notice of compliance issued to a first person and in respect of which a patent list has been submitted, the second person shall, in the submission, with respect to each patent on the register in respect of the other drug,

a. state that the second person accepts that the notice of compliance will not issue until the patent expires; or

b. allege that 

i. the statement made by the first person under paragraph 4(4)(d) is false,

ii. the patent has expired,

iii. the patent is not valid, or

iv. no claim for the medicinal ingredient, no claim for the formulation, no claim for the dosage form and no claim for the use of the medicinal ingredient would be infringed by the second person making, constructing, using or selling the drug for which the submission is filed.

Subsection 6(1) then sets out how an ‘innovator’ drug company (ie a ‘first person’) must object to such allegations:

A first person may, within 45 days after being served with a notice of allegation under paragraph 5(3)(a), apply to a court for an order prohibiting the Minister from issuing a notice of compliance until after the expiration of a patent that is the subject of the notice of allegation.

Facts

Under the Regulations, Allergan sought an order prohibiting the Minister of Health from issuing a Notice of Compliance (NOC) to Apotex for its generic glaucoma medication until the expiry of Allergan's patent. In the Notice of Allegation, Apotex challenged the validity of Allergan's patent on the grounds of obviousness and anticipation.

Justice Hughes, the Applications Judge, held that Apotex's allegation of invalidity on the grounds of obviousness was justified (2012 FC 767 at para 189). However, in separate proceedings, involving the same patent, Justice Crampton (as he then was) held that:

Allergan has met its burden of establishing, on a balance of probabilities, that Sandoz's allegation that the '764 Patent is invalid on the ground of obviousness is not justified. (Allergan Inc and others v Canada (Minister of Health) and Sandoz Canada Inc, 2011 FC 1316 (‘Sandoz’), para 127).

In other words, if Justice Hughes found the allegations of obviousness justified it would run contrary to Justice Crampton's earlier finding. Therefore in the interests of judicial comity, Justice Hughes disregarded his own findings, and granted the prohibition order in favour of Allergan. At paras 189–94 he writes:

As is apparent, I would find on the evidence before me that Apotex's allegations as to obviousness are justified … 

That is, however, not the end of the matter.

I must consider the question of comity. Is the evidence and argument before me ‘different’ from or ‘better’ than the evidence and argument before Crampton J in Sandoz? There is no real way to measure ‘different’ or ‘better’. The evidence and argument is of the same kind. In some cases Crampton J had unrebutted evidence whereas I have rebutted evidence. The difference in the evidence and argument is more one of quality to the best that can be discerned from the record that I have, and this court not having the record as to what was before Crampton J.

If I were to dismiss this application on the basis that Allergan did not discharge its burden of proving that Apotex's allegations as to obviousness were not justified; then, within a matter of hours—if not days—the Minister would give Apotex a Notice of Compliance, and the issue as to whether the court should grant a prohibition order would be moot. The Court of Appeal, in all likelihood, would not hear an appeal.

I believe that there have been serious issues raised as to comity. The somewhat contradictory decisions of the Court of Appeal should be considered by that court and clear instruction given as to how, in an NOC context, previous decisions of a court on the same issues respecting the same patent, should be considered.

The only practical way to get the matter before the Court of Appeal is for me to grant the Order for prohibition in the likely expectation that Apotex will appeal.

Analysis

The Federal Court of Appeal strongly disapproved of this approach. Justice Noël, writing for a unanimous court, held that ‘it was not open to the Federal Court judge to grant the prohibition in order to further his desire to clarify the jurisprudence’ (2012 FCA 308 at para 6). The court nonetheless upheld the prohibition order. At paras 49 and 50 the court stated that:

it was not open to the Federal Court judge to issue a prohibition order for the purpose of having his concerns about the use of the doctrine of comity and the notion of abuse of process addressed by this court on appeal … unless the Federal Court judge could demonstrate that Crampton J.'s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it.

The court added that claim construction must be conducted in light of the patent as a whole (para 72). Had the Applications Judge done a purposive and proper reading of the patent, he would have concluded that the improved safety profile formed part of the claimed invention (para 74).The court also found that the improved safety profile was not obvious to a person skilled in the art, as the invention was ‘the bi-product [sic] of an extensive, multi-centred, double masked, and randomized trial. There was nothing routine about this exercise and the manner in which the inventors came upon the improvement shows in the clearest possible way that it was not obvious to try’ (para 92).

Practical significance

Litigants and appellate courts should not bear the burden of satisfying a first instance judge's desire to clarify the jurisprudence. This distracts from the judicial function. As the Federal Court of Appeal noted:

… the parties were entitled to have their dispute settled on the merits and the Federal Court judge by issuing a formal judgment that was contrary to the conclusions that he reached on the merits, failed in his task. (para 49)

In addressing the issue of comity, a question which was at the heart of the Application Judge's unusual decision, the court emphasized that judicial comity (a horizontal application of stare decisis, if you like) generally applied to questions of law, but not to questions of fact:

In the Federal Court, Mactavish J. in Almrei (Re), 2009 FC 3, acknowledged this limitation as follows (para. 70):  

‘The principle of judicial comity might arise in the context of a ruling on a point of law but I did not consider myself bound by any factual findings made by my fellow judges in the earlier proceedings.’ (para 45) 

The rationale for this is that there can only be one correct interpretation of a question of law, whereas questions of fact may give rise to divergent findings (especially where the evidentiary base differs). The court was of the view that ‘decisions rendered by colleagues are persuasive and should be given considerable weight, a departure is authorized where a judge is convinced that the prior decision is wrong and can advance cogent reasons in support of this view’ (para 47). Accordingly, since the task of the Applications Judge in this case lay in identifying the inventive concept (a question of law), it was not open to him to depart from Justice Crampton's earlier decision unless that earlier construction was justifiably wrong or new evidence justified the departure. At paras 50–52, the court stated that:

… construing a patent in order to identify the inventive concept when it is not readily discernible for the claim itself requires looking at the whole of the patent (Sanofi, para. 77) and gives rise to a question of law (Western Electric Co. v Baldwin International Radio of Canada Ltd., [1934] S.C.R. 570, pp. 572-573 (S.C.C.); Weatherford Canada Ltd. v Corlac Inc., 2011 FCA 228, [2011] F.C.J. No. 1090, para. 24—and the authorities referred to in these passages). It follows that unless the Federal Court judge could demonstrate that Crampton J.'s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it. 

The Federal Court judge did not identify any error nor did he rely on distinct evidence to explain his diverging view. He simply chose to construe the patent differently and held that the inventive concept did not extend to the improved safety profile which Crampton J. had included …

If this was the only reason why the Federal Court judge felt that he could disregard the opinion of his colleague, it does not justify his action. Construing a patent in order to identify the inventive concept is no less an exercise that leads to a determination of law because the document being construed is drafted by the patentee … The analogy which the Federal Court judge drew with a contract (ibidem) is no more helpful since all else being equal a contract should not be subjected to contradictory constructions any more than a patent, or a statute.

For a decision concerning the inventiveness of glaucoma treatment, the Applications Judge demonstrated his own short-sightedness in failing to see the bigger picture. As set out by the Court of Appeal, his concerns over comity could have been neatly addressed by questioning whether his divergence with Justice Crampton's earlier decision was one of law, or one of fact (and whether the divergence was justified.

JIPLP welcomes Martin Kujan

The Journal of Intellectual Property Law & Practice is delighted to welcome Martin Kujan as the most recent member of its Editorial Board.  Martin (IP Consultant, Neulogy, Slovak Republic) has previous experience of editorial responsibilities, having served on the board of the excellent online journal SCRIPTed.

You can read a little more about Martin here.

I say doughnut and you say dónut: why is the CTM system ‘different’

Author: Laetitia Lagarde (Studio Legale Jacobacci, Torino)

Case T-569/10 Bimbo v OHMI—Panrico (BIMBO DOUGHNUTS), General Court (Seventh Chamber), 10 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt028, first published online: March 21, 2013

The General Court upheld the likelihood of confusion between BIMBO DOUGHNUTS and the earlier Spanish mark DOGHNUTS, thus allowing a Spanish pastry maker to prevent its competitor from using the word ‘doughnut’ for its products, on the grounds that a large part of the Spanish public does not speak English and will perceive the similar element as a fantasy word.

Legal context

According to Article 8(1)(b) of Council Regulation 207/2009 on the Community trade mark (CTMR), upon an opposition filed by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, due to the fact that it is identical or similar to an earlier trade mark and to the goods or services covered by the trade marks, there exists a likelihood of confusion by the public in the territory in which the earlier trade mark is protected.

Further, the fact that an element of a composite trade mark is in itself a trade mark with a reputation may play a part in the appraisal of the relative weight of the various components of the composite mark. Thus, if one element of a composite mark is itself a mark with a reputation, it may, by the same token, play a more important role in the composite mark.

However, the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element. Indeed, it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see Case C-334/05 OHIM v Shaker [2007] ECR I-04529).

Facts

The OHIM Opposition Division and the Board of Appeal (BoA) had upheld the opposition brought by Panrico (the ‘opponent’) against the CTM application filed by Bimbo, on the basis of Article 8(1)(b) CTMR.

The BoA noted that ‘doughnut’ was an English word meaning a ‘ring-shaped small spongy cake made of dough’. The word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. Thus for the average Spanish consumer (excluding those who speak English) the word ‘doughnut’ did not describe the goods in question or their qualities and did not have any particular connotation in relation to them: the earlier sign (like the applicant's mark) would be perceived as a foreign or fantasy term by most consumers.

Taking account of the average distinctiveness of the earlier trade mark, the BoA, in an overall assessment of the likelihood of confusion, concluded that owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.

Bimbo appealed against the BoA decision which was dismissed by the General Court.

Analysis

Neither party disputed that the goods concerned were identical in Class 30, since the ‘pastry and bakery products, specially doughnuts’ claimed for the applied-for mark were included in the category of ‘all kinds of confectionary and pastry products’ protected by the earlier trade mark.

Regarding the comparison of the signs, the applicant claimed infringement of Article 8(1)(b) CTMR relying on two arguments: (i) the word ‘doughnuts’ is descriptive of the goods in question and has no distinctive character, even for Spanish consumers. (ii) Further, BIMBO is one of the best known trade marks in Spain: since it was the only distinctive element of the applied-for mark, there was no likelihood of confusion with the earlier mark.

As to the first argument, considering the distinctiveness of the word ‘doughnuts’, the court rejected Bimbo's arguments and evidence regarding the level of English spoken and understood by the Spanish consumer. In its view the Spanish public generally has a low degree of familiarity with the English language (see Case T–104/01 Oberhauser v OHIM—Petit Liberto, 23 October 2002).

The applicant's argument that knowledge of English in Spain is steadily increasing, particularly among young people, did not refute the fact that, according to the fairly recent study submitted by the applicant itself, almost 50 per cent of Spaniards have no command of any foreign language.

Thus the part of the relevant public which did not speak English would not realize, on seeing the word ‘doughnuts’, that ‘dónuts’ was the Spanish transcription of that word. It was therefore unnecessary to decide whether the word ‘dónut’ was regarded by the Spanish consumer as a generic term denoting doughnuts, or whether ‘dónut’ was regarded as denoting a trade mark with a reputation which belongs to the opponent.

The opponent had produced a survey of Spanish consumers which demonstrated that more than 80 per cent of the interviewees stated that they did not know the meaning of the word ‘doughnuts’. The applicant criticized that survey on the grounds that the researcher only showed the word to the interviewees but did not speak it aloud. The court found that the method employed in the survey in question was justified due to the nature of bakery and pastry products, in particular those bearing a trade mark, which are often purchased in self-service shops and are consequently bought on sight, without their trade mark being spoken aloud. The method chosen when the survey was conducted of showing the word ‘doughnuts’, without saying it, thus reflected what actually occurs in a large number of bakery and pastry product purchases.

Regarding the second argument, the BoA did not explicitly address the applicant's argument based on the reputation of the ‘bimbo’ element of the applied-for mark in the contested decision. However, the court found that the ‘doughnuts’ element in the applied-for mark ‘would catch the attention of the relevant Spanish public, as it appears unusual in Spanish due to the atypical combination of vowels “ou” and the accumulation of consonants “ghn”’. Thus the ‘doughnuts’ element could not be considered negligible in the overall impression since it was longer and the word ‘doughnuts’ would attract the Spanish public's attention because it appeared atypical in Spanish owing, in particular, to the sequence of the consonants ‘ghn’.

Thus the 'doughnuts’ element, which is nearly identical to the earlier trade mark, had an independent and distinctive role in the CTMA. Further, since the 'doughnuts’ element was wholly meaningless for that consumer, the mark applied for, BIMBO DOUGHNUTS, did not form a unitary whole or a logical unit on its own in which the ‘doughnuts’ element would be merged with the ‘bimbo’ element. The part of the relevant public which was not familiar with English would not be able to understand the sign at issue as meaning that the goods concerned were doughnuts produced by the undertaking Bimbo.

Since bakery and pastry products are everyday low-cost consumer goods, the public must be considered to have a somewhat reduced level of attention when purchasing them, and due the average degree of visual and phonetic similarity between the trade marks at issue, the BoA was correct in concluding that there was a likelihood of confusion.

Practical significance

This judgment falls within the implementation of a well-noted case in 2012 (see Case C-196/11 Formula One Licensing BV v OHIM, 24 May 2012) in which the court reiterated the coexistence between CTMs and national trade marks and found that the validity of a national trade mark may not be called into question in the opposition proceedings of a CTM.

The court had previously held in 2007 that the word ‘dónuts’ was not generic in Spain where the average consumer perceives it as distinctive sign in relation to pastries, among others goods (see T-334/04 House of Donuts v OHIM—Panrico, 18 April 2007, para 48).

Departing from the basis that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which the opposition is based, the misspelled ‘doghnut’ sign has enjoyed the same presumption of validity on the Spanish Trade Mark Register (OEPM) since 1994, as has the word ‘dónut’—first registered in 1962. Indubitably, at both the time of registration and today, no Spanish consumer would have perceived the meaning of the word ‘doughnut’ as a description for a pastry made of dough. It is unfortunate that the court did not find it necessary to consider the reputation of BIMBO, thus concluding that the earlier national right prevails, at least until cancellation proceedings are brought in Spain.

Emails (and other pure information) are not property

Author: Mark Anderson (Anderson Law LLP)

Fairstar Heavy Transport NV v Adkins and another [2012] EWHC 2952 (TCC), Edwards-Stuart J, Technology and Construction Court, England and Wales, 1 November 2012

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt030, fFirst published online: March 21, 2013

A court held that there was no property right in emails.

Legal context

This was a decision on an application for inspection of emails, preliminary to a main action. The first defendant opposed the application on the ground that the claimant had no property in the emails. In the words of the judge in this case:

To the extent that people require protection against the misuse of information contained in e-mails, in my judgment satisfactory protection is provided under English law either by the equitable jurisdiction to which I have referred in relation to confidential information (or by contract, where there is one) or, where applicable, the law of copyright. There are no compelling practical reasons that support the existence of a proprietary right—indeed, practical considerations militate against it.

For unstated ‘jurisdictional reasons’ none of these other areas of law was available, in the present case, so the court was required to focus on the narrow (but important) legal question of whether property rights exist in pure information—here, emails held in electronic form.

Facts

The first defendant, Mr Adkins, had been the CEO of the claimant, Fairstar, a Dutch company, which provided specialist transportation services by sea and owned a number of ships. The company was acquired in a hostile takeover, at which point Mr Adkins was dismissed. Fairstar was in dispute with a Chinese shipyard in relation to the construction and supply of some ships. The new management of Fairstar sought access to documentation in Mr Adkin's possession concerning the dispute.

During his period as CEO, emails sent to Mr Adkin's office email account were automatically forwarded to his private email account and the office emails were then automatically deleted from the office system. Emails sent by Mr Adkins as CEO were typically sent from his private account.

In the present application to the court, Fairstar sought inspection of these emails by an IT expert. Mr Adkin's objected on the ground that Fairstar had no entitlement to inspect these emails, at any rate not by means of any claim that could be asserted in the courts of England and Wales.

The case report indicates that there was a last-minute flurry of witness statements and supporting evidence before the hearing, and that objections were made to having to deal with the material submitted without an adjournment. This resulted in counsel for Fairstar agreeing to limit the scope of the application in the following terms:

Does Fairstar have an enforceable proprietary claim to the content of the e-mails held by Mr Adkins (and/or Claranet) insofar as they were received or sent by Mr Adkins acting on behalf of Fairstar?

Edwards-Stuart J reviewed a large number of authorities that had been cited by counsel on the question of whether there is property in pure information. He considered that it was ‘clear that the preponderance of authority points strongly against there being any proprietary right in the content of information, and this must apply to the content of an e-mail, although I would not go so far as to say that this is now settled law’. He continued:

I can find no practical basis for holding that there should be property in the content of an e-mail, even if I thought that it was otherwise open to me to do so. To the extent that people require protection against the misuse of information contained in e-mails, in my judgment satisfactory protection is provided under English law either by the equitable jurisdiction to which I have referred in relation to confidential information (or by contract, where there is one) or, where applicable, the law of copyright. There are no compelling practical reasons that support the existence of a proprietary right - indeed, practical considerations militate against it.

Accordingly he found in favour of Mr Adkins and rejected the application.

Analysis

As the judge points out, the conventional view in England, supported by the case law that he discussed, is that there is no property in pure information. Other rights may be relevant in particular situations, for example:

Physical property in the paper or other recording medium on which the information is recorded.

Intellectual property in any invention, patent claim, copyright work etc. that may exist in relation to the information.

Rights to prevent use or disclosure of the information under the law of confidence.

Contractual rights to prevent use or disclosure of the information, eg as part of an employment contract.

For unstated reasons, none of these other rights was available in the present case. Commentators have speculated that this may be because the claimant was a Dutch company and any contracts with Mr Adkins may have been under Dutch law and subject to the jurisdiction of the Dutch courts, leaving a property claim as the only potential claim available in the English courts. The precise reasons may not matter too much to intellectual property lawyers, given that the scope of the application to the court was so precisely defined, as quoted above.

The writer understands that property rights may exist in information in other countries, eg under US trade secrets laws.

Practical significance

The taxonomy of intellectual property does matter. It is very helpful to intellectual property lawyers to have the case law in this area examined in detail by a High Court judge, and to have some clear and up-to-date analysis that property does not exist in pure information under English law.

For example, having this clarity helps contract draftsmen when drafting clauses dealing with the ownership and use of the results of research projects, such as might be found in a research collaboration agreement or technical consultancy agreement.

This case law should be considered in conjunction with other recent case law that examines related topics. For example, in Coogan v News Group Newspapers Limited and Mulcaire [2012] EWCA Civ 48, the Court of Appeal (led by Neuberger MR) decided that confidential information should be regarded as a type of intellectual property. That decision was made in the context of s 72 of the Senior Courts Act 1981, but could be viewed as having wider application. It is also widely acknowledged that know-how is commonly licensed in a similar way to patents and other types of intellectual property, and for transaction purposes is often viewed as a type of intellectual property. Usually, this is on the basis that the know-how is protected as confidential information.

Rebecca Chong joins JIPLP Editorial Board

JIPLP welcomes Rebecca Chong as its latest addition to the Editorial Board. Rebecca is currently legal counsel to the Institute of Practitioners in Advertising, London. She has served for three years as Deputy Editor of the European Trade Mark Reports and was formerly in private practice with law firm Morgan Cole. Rebecca is also a popular speaker on advertising-related intellectual property issues on the British conference circuit.

We welcome Rebecca to the Board and look forward to her contributions to the further development of JIPLP.

Should we all be just a little more American?

Here's the Editorial of the April 2013 issue of JIPLP, the full contents of which you can peruse here. This is a guest piece by Paul Stevens, an intellectual property partner in Olswang LLP, who writes:

"One enduring advantage, and indeed pleasure, of being an intellectual property law practitioner is the international remit which we enjoy outside our own jurisdiction. Conventions between states ensuring reciprocity give rise to a common language for practitioners and familiarity with internationally recognised concepts readily understood and explained to clients. The cross-fertilisation of jurisprudential heritages from different territories provides a rich learning environment for self-improvement and best practice. The work of organizations such as the World Trade Organization and the World Intellectual Property Organization has led to increasing harmonisation, as well as reciprocity of protection.

And yet there remain significant differences: differences borne of both national laws and legal practitioners' background.

In the area of trade mark law, we see differences around the world at the margins of protection. At its core, trade mark law still protects the trader from origin confusion arising from third party goods or services. However, one area where both law and practice see a huge divergence is the approach taken at the point of filing. And this is where I wonder whether we in Europe should perhaps be just that little bit more American.

Maybe we're not -- but is there any
harm in being a bit more American? 

Before the US Patent and Trademark Office (USPTO), applicants must, prior to registration, demonstrate that they have actually used the trade mark in commerce for the goods or services sought, or have an intention to use the mark for those goods and services. An intention to use must be “bona fide” and must be something more than just an idea or an aspiration. That intention to use is crystallised on the application form by a statement that, if inaccurate, gives rise to the possible penalty of perjury. Such a sworn statement is not of itself sufficient either. Applicants should generally be able to produce contemporaneous objective documentary evidence demonstrating that at the time of the application they had a bona fide intent to use the mark in the US for each of the goods and services applied for. That documentary evidence may include business plans, product designs, samples, or correspondence with prospective licensees. A failure to produce such evidence may result in a refusal or invalidity of the mark. Misstatements made before the USPTO have resulted in trade mark registrations being rendered invalid where the applicant signing the declaration has shown a “reckless disregard for the truth”.

With these penalties comprising her legal landscape, unsurprisingly a US attorney is highly circumspect when drafting and filing specifications for applicants. The prospect of her client being accused of “fraud before the USPTO” makes for a prudent advisor when looking at the breadth of specifications.

In contrast, at OHIM a Community trade mark can only be declared invalid “where the applicant was acting in bad faith when she filed the application for a trade mark”. There is no requirement that there be an intention to use the mark applied for, and evidence of no intent to use is not a ground for establishing bad faith per se. OHIM's practice of allowing specifications to encompass all goods or services in a class by use of class headings (both before and after the CJEU's decision in IP Translator) tacitly endorses specifications with extravagant breadth. Applicants and their advisors have little incentive to narrow their specification to goods or services which are really of interest. Indeed, the structure encourages advisors to draft broadly, just in case.

Why is this a problem? Any practitioner who has sought to clear a trade mark in more than one territory is faced with an impossible task of steering a client through registrations which may, on their face, have little to do with the commercial interests of the registrants. Advisors can't distinguish between real and paper conflicts. Businesses that regularly clear trade marks become frustrated because of the white noise of large numbers of ‘paper-only’ clashes. Unnecessary registry proceedings arise where there is no real conflict but where overly broad specifications overlap.

Ultimately commerce is hindered by a cluttered register. As the European community grows, the potential for more imagined conflict increases. With that in mind, wouldn't we Europeans benefit from being just a little more American?".

April 2013 JIPLP now online -- but what's in it for you?

The April 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has now been published online.  Subscribers to the online-only and online-plus-printed versions can access it in full via the JIPLP website here. The printed version will follow in the not-too-distant future.

The contents of this issue are listed below.  You don't have to be a subscriber to read the items listed below, since each may be read via short-term pay-to-read access by visiting the JIPLP website.

The guest editorial by Paul Stevens (Olswang LLP) will be posted in full on this weblog and can be enjoyed in full, at no cost to its readers/

Volume 8 Issue 4 April 2013

Guest Editorial

• Select this article
  • Paul Stevens

  Should we all be just a little more American?

Current Intelligence

• Select this article
  • Robert Lundie-Smith

  Patents: UK to be one-stop-shop for non-infringement across Europe?

• Select this article
  • Kate Manning

  Trade marks: domain names, distinctiveness and evidence

• Select this article
  • Emir Crowne and
   
  • Shaun Hashim

  Trade marks: Newsletter containing official mark held sufficient evidence of ‘adoption and use’

• Select this article
  • Rossa McMahon

  Irish Patents Office substantially revokes specification for registration which exceeded demonstrable use of the mark

• Select this article
  • Peter Ellis and
   
  • Giles Parsons

  Starbucks v Sky: an invalid mark, a squeeze argument and an absence of passing off

• Select this article
  • Betsy Vinolia Rajasingh

  Copyright: India enacts laws to protect copyright over digital content

• Select this article
  • Stefano Barazza

  Designs: The individual character of a design: freedom and the ‘saturation of the state of the art'

• Select this article
  • Darren Smyth

  How is the scope of protection of a registered Community design to be determined?

• Select this article
  • Darren Smyth

  Publicity orders in intellectual property cases—When are they granted and how must a party comply?

• Select this article
  • Stefano Barazza

  Utility models: The Enforcement Directive and invalidation procedures: an unsurprising negative verdict

Articles

• Select this article
  • Arnaud Folliard-Monguiral and
   
  • David Rogers

  Community trade mark round-up 2012

• Select this article
  • Binka Kirova and
   
  • Ivan Penkin

  The name of the thing, or an attempt at a semiotic and semantic analysis of trade marks

• Select this article
  • Eleonora Rosati

  The Orphan Works Directive, or throwing a stone and hiding the hand

• Select this article
  • Ilanah Simon Fhima

  Initial interest confusion

From GRUR Int.

• Select this article
  • German Federal Court of Justice

  Solution with equivalent effect diverging from literal meaning—Pallet Container III (Palettenbehälter III)

  
  

IP in Review

• Select this article
  • Christopher Wadlow

  The Diplomatic Platypus

• 
  Select this article
  • Michael Mireles

  Here to stay: Universities, technology transfer and intellectual property

• 
  Select this article
  • Riccardo Sciaudone

  Dealing with IP matters in cross-border cases

• Select this article
  • Francis Davey

  Philosophical perspectives on intellectual property