July JIPLP: even more available than before ...

The July 2014 issue of the Journal of Intellectual Property Law & Practice was published online in its entirety on 12 June (click here for publication announcement and contents list), most of its content having been individually posted online ahead of that date. The printed version has now been published and despatched, and should be with subscribers soon if they have not already received it.

Most subscribers -- well over 90% -- take their subscription to the electronic edition, either by itself or in conjunction with the printed version. If time is of the essence, or if you want to enjoy the facility of searching the journal's online archive, you should be seriously thinking of taking the electronic version if you are not already doing so. Subscription details are available here.

Even more books to review

Here's yet another list of books for which JIPLP seeks reviewers. If you think that you are the right person to review one of these titles, please email Sarah Harris at sarah.harris@oup.com and tell her, by not later than close of play on Wednesday 2 July. If you are not yet known to us, please let us have sight of your CV or some other explanation as to why you feel that the book should be reviewed by you rather than anyone else. The books on offer are the following:

Title: Primer On International Copyright And Related Rights
Author: Jørgen Blomqvist
Publisher: Edward Elgar Publishing
"The international law on copyright and related rights is comprehensive and complex, spanning over a large number of different treaties which have been compiled and amended over more than 125 years. This book gives a concise, but comprehensive introduction to the rules and their rationales. Its rights-oriented approach makes it equally valuable to the student and the practitioner who needs both an introduction to and overview over the international law in the field. The book explains all treaties relevant today, from the 1886 Berne Convention to the WIPO Marrakesh Treaty of 2013".
Further information about this title is available here.


Title: Piracy in the Indian Film Industry: Copyright and Cultural Consonance
Author: Arul George Scaria
Publisher: Cambridge University Press
"Piracy in the Indian Film Industry: Copyright and Cultural Consonance sheds light on how copyright law works at the grassroots level in India, by exploring the social, cultural, historical, legal and economic dimensions of piracy in one of the biggest copyright-based industries: the Indian film industry. Based on extensive fieldwork, this book provides novel and insightful findings on the complexity and diversity of perceptions regarding piracy within Indian society. The bottom-up approach analysis adopted in the book elucidates how local factors influence copyright enforcement and the book proposes a mix of positive and negative incentives to increase the voluntary compliance of copyright law in India".
Further information about this title is available here.


Title: Balancing Wealth and Health The Battle over Intellectual Property and Access to Medicines in Latin America 
Editors: Rochelle Dreyfuss and César Rodríguez-Garavito
Publisher: Oxford University Press
"The case studies presented from 11 Latin American countries, have many commonalities in terms of economics, legal systems, and political histories, and yet they differ in the balance each has struck between proprietary interests and access concerns. The book documents this cross-country variation in legal norms and practice, identifies the factors that have led to differences in result, and theorizes as to how differentials among these countries occur and why they endure within a common transnational regulatory regime.

The work concludes by putting the results of the investigations into a global administrative law frame and offers suggestions on institutional mechanisms for considering the trade-offs between health and wealth".
Further information about this title is available here.

CJEU allows website-blocking injunctions with some reservations

Author: Martin Husovec (IMPRS-CI Doctoral Research Fellow at Max Planck Institute for Innovation and Competition)

UPC Telekabel Wien, Case C-314/12, Court of Justice of the European Union, 27 March 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu101, first published online: June 19, 2014

The Court of Justice of the European Union (CJEU) issued its long-awaited decision on admissibility of the website-blocking injunctions. The ruling generally allows website-blocking, but makes its permissibility depend on the number of requirements. Because the decision addresses primarily website-blocking injunctions which omit to specify the specific blocking technology and/or fixed address of the website (so called ‘open-ended injunctions’), the extent to which its principles also apply to specific website-blocking injunctions is subject to interpretation.

Legal context

Article 8(3) of Directive 2001/29 (the ‘InfoSoc Directive’) provides that: ‘[m]ember States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right’. ‘The conditions and modalities relating to such injunctions should be left to the national law of the Member States’ (Recital 59 of the InfoSoc Directive). ‘Those rules of national law must, however, be designed in such a way that the objective pursued by the directive may be achieved’ (see, by analogy, Case C-324/09 L'Oréal v eBay [2011] ECR I-06011, para 136).


Two film production companies became aware that their copyright films were being offered without authorization on the streaming website ‘kino.to’. Based on Article 81(1a) of the Austrian Copyright Act (UrhG), which is an Austrian implementation of Article 8(3) of the InfoSoc Directive, they sought a court order against UPC Telekabel, an internet service provider, seeking to block access for that website's customers. In 2011, the Handelsgericht Wien ordered UPC to block access by means of DNS and IP address blocking. On appeal, the Oberlandesgericht Wien amended the order from a specific injunction to an open-ended order prohibiting mere outcome (a so-called ‘Erfolgsverbot’). This open-ended injunction then obliged the internet access provider only to achieve a certain result, without specifying the measures that it should take. Compliance with the injunction would be then reviewed in the enforcement proceedings, which would assess whether all reasonable measures were taken to achieve the blocking result. The defendant appealed to the Oberster Gerichtshof (Austrian Supreme Court), which then submitted a series of preliminary questions to the Court of Justice of the European Union (CJEU).


The CJEU was asked, among other questions, (i) whether a streaming website without any business relationship to an internet access provider can be still regarded as using its services under Article 8(3) of the InfoSoc Directive and, if so, (ii) whether fundamental rights preclude a court from issuing a website-blocking injunction when that injunction does not specify the measures which that access provider must take and when that access provider can avoid incurring coercive penalties for breach of that injunction by showing that it has taken all reasonable measures.

The Advocate General advised the court, first, that the operators of allegedly infringing websites also ‘use’ the services of an internet access provider in a sense of Article 8(3) InfoSoc Directive (para 59 of the opinion). Therefore, even where customers of a provider might not infringe rights themselves when using the website, the website-blocking injunctions can still be issued against the provider, as long as its services are used to channel users to infringing websites. Secondly, the website-blocking injunction may not be imposed in an open-ended form, but must be always specific (para 90 of the opinion).

The court accepted the first point, arguing that even an access provider who has no affiliation or business relationship with the targeted websites is still ‘used’ by these services. The court added that,
given that the internet service provider is an inevitable actor in any transmission of an infringement over the internet between one of its customers and a third party, since, in granting access to the network, it makes that transmission possible …, it must be held that an internet service provider … is an intermediary whose services are used to infringe a copyright or related right within the meaning of Article 8(3) of Directive 2001/29.
The requirement of some business relationship ‘cannot be inferred from the objectives pursued by that directive, given that to admit such a requirement would reduce the legal protection afforded to the rightholders’. The objective of the Directive, said the court, is to guarantee them a high level of protection (Recital 9).

On the second point, the court disagreed with the Advocate General. Although it agreed that both the safe harbours (para 52 of the opinion) and the prohibition of general monitoring obligation (para 78 of the opinion) do not preclude such injunctions, and also that they can be permissible under some circumstances. It rejected the view of the Advocate General on the issue of a required form of such injunctions. The Advocate General advised that website-blocking injunctions are issued only as specific measures, because different measures ‘differ significantly as regards the degree to which they interfere with the fundamental rights’ and the ‘downstream opportunity for the addressee of the outcome prohibition to defend itself’ in the enforcement proceedings does not strike the necessary balance. He summarized his opinion strongly, as follows:
According to the case-law, the balance between the fundamental rights must be observed when the injunction is issued. In this case it is expressly not being observed; instead many considerations relevant to fundamental rights will only be examined at a later stage. … An examination of the ISP's situation also shows that no balance between the fundamental rights is struck by that procedural opportunity. The ISP must suffer the issuing of an injunction against it, from which it is not apparent what measures it is required to take. If, in the interest of its customers′ freedom of information, it decides on a mild blocking measure, it must fear a coercive penalty in the enforcement process. If it decides on a more severe blocking measure, it must fear a dispute with its customers. The reference to a possible opportunity to defend itself in the enforcement process does not in any way alter the ISP's dilemma.
He added that, although it is ‘true that the originator can rightly refer to the danger of massive infringement of its rights by the website’, in cases like the present, ‘the ISP has no connection with the operators of the copyright-infringing website and has itself not infringed the copyright’. Therefore, in his opinion, open-ended injunctions, in contrast with specific injunctions, cannot be said to strike a fair balance between the rights of the parties.

The court apparently did not deeply share these concerns. Surprisingly, it turned the ‘ISP's dilemma’ is being resolved in favour of the internet access provider, arguing that the freedom to conduct a business would be better served if any business were ‘able to freely use, within the limits of its liability for its own acts, the economic, technical and financial resources available to it’. Subsequently, the court stylized the debate as a human rights balancing of a conflict between (i) copyrights and related rights, which are intellectual property and are therefore protected under Article 17(2) of the Charter; (ii) the freedom to conduct a business, which economic agents such as internet service providers enjoy under Article 16 of the Charter; and (iii) the freedom of information of internet users, whose protection is ensured by Article 11 of the Charter. The decision in this respect confirms a tendency to solve these types of issues not as a matter of secondary legislation but as limitations on human rights.

As regards the freedom to conduct a business, the CJEU concluded that the adoption of a website-blocking injunction restricts that freedom of a provider, because it cannot freely use available resources, given that such measure ‘may represent a significant cost for him, [and] have a considerable impact on the organization of his activities or require difficult and complex technical solutions’. Despite this, it ‘does not seem to infringe the very substance of the freedom’ (para 51 of the decision) because an open-ended injunctions
leave it to the addressee to determine the specific measures to be taken in order to achieve the result sought, with the result that he can choose to put in place measures which are best adapted to the resources and abilities available to him and which are compatible with the other obligations and challenges which he will encounter in the exercise of his activity.
This reasoning seems flawed, given that enforcement proceedings must in the same way as any main proceedings necessarily establish whether the chosen measure was reasonable or not. On this basis, the courts will inevitably test and prescribe such measures by outlining what is unreasonable. The only difference is that, instead of arguing about reasonableness of the measures in the main proceedings before they are prescribed, the debate will be shifted to the enforcement proceedings subject to penalty. This has several consequences. First, the burden of proof will shift from the right holders to providers. Secondly, if the CJEU decision is taken literally, the national court will not even need to assess if there is at least one measure that might be reasonable, thus leaving the provider alone to figure out if it needs to do anything at all. Thirdly, the provider might choose measures that are cheaper for him, but disproportionate for the human rights of users (eg strong Deep Packet Inspection, ie a form of computer network packet filtering that examines the data part of a packet as it passes an inspection point).

All of these aspects are then potentially taken out of the court's focus when granting the order. As a consequence, the court only delays the problem and creates a great deal of legal uncertainty that could have been prevented by rejecting, or at least limiting, the website-blocking injunctions in the main proceedings. Moreover, if the injunctions are granted irrespective of the size of an intermediary, their automatic issuance could lead to anticompetitive results, given that what is reasonable for an incumbent is not reasonable for small and local access providers. Moreover, what the CJEU labels as freedom to use resources in fact is only a fallacy, because technology-specific injunctions still do not specify exact technical means, but only broadly outline technical means. If, say, an access provider is obliged to employ Deep Packet Inspection, there is not one specific way, since there are many technically detailed means by which to carry it out. The CJEU thus sacrifices legal certainty without winning any real flexibility for the providers and users.

That said, the court still does not give the courts of Member States a free rein, but subjects the human rights compatibility of website-blocking injunctions to several important reservations. The open-ended website-blocking injunctions (i) must be strictly targeted (para 56); (ii) must at least partially prevent and seriously discourage the access to a targeted website (para 62); (iii) must not lead to unbearable sacrifices for an access provider (para 52); (iv) must give a court in enforcement proceedings a possibility to assess their reasonableness (para 54); (v) must provide for a possibility for users to challenge the scope of the blocks once the implementing measures are known (para 57); and (vi) must be transparent in their implementation (para 57). If these six conditions are not met, the open-ended website-blocking injunction may not be issued.

Practical significance

This decision does not address whether the website-blocking injunctions are required by European Union law under Article 8(3) of the InfoSoc Directive, but only whether they are compatible with it (see para 45 of the decision; see also Martin Husovec ‘Injunctions against Innocent Third Parties: The Case of Website Blocking’ (2013) 4 Journal of Intellectual Property, Information Technology, and Electronic Commerce Law (JIPITEC) 118).

The decision will most likely very differently influence already quite divergent national practice regarding website-blocking injunctions. Member States that already require injunctions to be precise and clear in the main proceedings, will probably not need to apply all the considerations of the CJEU in UPC Telekabel Wien. It is because some of the requirements, such as the need of locus standi for users and the requirement of ex post implementation transparency, seem to be driven by a concern that exact conditions of the measures are determined outside of the court's oversight (see para 57). This is not the case when such injunctions are technology-specific and fixed as to the exact address of the targeted website. Website-blocking injunctions that are technology-specific, but still open to future changes, such as those issued before the courts of England and Wales, will also need to continue to guarantee a possibility for users to challenge the scope of the blocks ‘once the implementing measures are known’ (para 57). Moreover, as the last sentence implies, such open-ended injunctions, although technology-specific, must be transparent so that users can invoke their rights. On the other hand, it can be argued that even the implementation of technology-specific and fixed website-blocking injunctions can lead to a problem of over-blocking of the legitimate content, which might also have been a reason why the CJEU especially requires the need of locus standi for users. This would then lead to locus standi of users as a general requirement also in cases of all the specific website-blocking injunctions. Especially in the civil law jurisdictions, such a locus standi might be difficult to implement as a procedural rule as suggested by the court (para 57) or even in a form of a tortious claim. A substantive claim in the contract seems to be the most promising avenue.

It is also clear that not all of the countries will be able to issue open-ended injunctions of this kind. If national procedural law does not provide for assessment of the reasonableness of such injunctions in enforcement proceedings, but for instance only automatically attaches a strict liability to any breach, the court cannot issue such an open-ended website blocks in the first place.

On the other hand, website-blocking injunctions in all the Member States still must be strictly targeted. This means that any measures can only target those who infringed rights, whether as primary or secondary infringers. Any collateral over-blocking of innocent parties would render them disproportionate. The CJEU here confirms the principle of ‘collateral censorship’ first used by the European Court of Human Rights (ECtHR) in the Ahmet Yıldırım v Turkey case (App No 3111/10) [2012]. Further, blocking injunctions must be probably so effective that they at least partially prevent and ‘seriously discourage’ access to a targeted website. This standard seems to be somewhat higher than that endorsed by the Advocate General, who opined that ‘the quantitative assessment of the foreseeable success of the blocking measure is [only] one factor to be weighed’. Finally, imposition of the website-blocking should not lead to unbearable sacrifices (costs) for an access provider. Thus if the court were to require that a provider implement a system of Deep Packet Inspection by a smaller provider, it can be well argued that the latter is not obliged to do so due to considerations of personal cost.

UPC Telekabel concentrated on users and providers, but did not discuss proportionality from the perspective of targeted websites. The court did not explicitly endorse the advice of subsidiarity of the claims given by the Advocate General, who suggested that ‘a claim against the ISP is, admittedly, not completely out of the question, but the originator must, as a matter of priority, so far as is possible, claim directly against the operators of the illegal website or their ISP’ (para 107 of the opinion). In consequence, pressing problems related to a right to a fair trial of a targeted website owner are not mitigated by UPC Telekabel (see Husovec, ‘Injunctions against Innocent Third Parties’, pp. 123 ff).

This decision shows that even website-blocking might be considered a permissible specific monitoring obligation (see Art. 15 of the Directive 2000/31/EC (the ‘E-Commerce Directive’) OR the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’)). Specificity of such obligation thus seems to be eliminated to a question whether an object of a measure is individualized enough. Where the practice of blocking becomes an industry standard, and thus leads to “piling-up” of concrete objects with ‘special monitoring care’, it is questionable if the general monitoring has still any meaningful role to play next to the Charter of Fundamental Rights of the European Union. Since some forms of blocking necessarily lead to filtering on the level of access provider (eg Deep Packet Inspection), it is questionable whether Case C-70/10 Scarlet Extended [2011] ECR I-11959 and Case C-360/10 Sabam [2012] ECR I-0000 are really still such a vehement rejection of filtering in Europe as is often presented. Some forms of website-blocking require all the attributes which Sabam and Scarlet seemed to outlaw in their cumulation. They are (i) exclusively implemented at the expense of a provider, use a filtering system of (ii) preventive nature for (iii) all electronic communications, which (iv) indiscriminately applies to all users and is issued for (v) unlimited period of time.

It is not completely out of question that the open-ended blocking injunctions might one day end up before the European Court of Human Rights in Strasbourg. This author would not be surprised if they were found incompatible with some of the conflicting fundamental rights due to great legal uncertainty and failure to satisfy the quality of the law requirement. Because the ‘law’ that prescribes an interference must be always sufficiently clear and foreseeable as to both the meaning and nature of the applicable measures, so it sufficiently outlines the scope and manner of exercise of the power of interference in the exercise of the rights guaranteed by the ECtHR (see more paras 95 ff of the opinion of the Advocate General in Scarlet Extended). The ruling of the CJEU fails to live up to that standard.

More books for review

Here's another list of books for which JIPLP seeks reviewers.  If you think that you are the right person to review one of these titles, please email Sarah Harris at sarah.harris@oup.com and tell her, by not later than close of play on  Friday 27 June. If you are not yet known to us, please let us have sight of your CV or some other explanation as to why you feel that the book should be reviewed by you rather than anyone else.

Title: Intellectual Property, Unfair Competition and Publicity: Convergences and Development 
Editors: Nari Lee, Guido Westkamp, Annette Kur and Ansgar Ohly
Publisher: Edward Elgar
"Dealing with rights and developments at the margin of classic intellectual property, this fascinating book explores emerging types of regulations and how existing IP regimes inform and influence the judicial and legislative creation of “substitute” IP rights. The editors have carefully structured the book to ensure that there is a thorough analysis of how commercial values arising at the margins of classic IP rights are regulated. As new regimes of regulations emerge, the question of how existing IP regimes inform and influence the judicial and legislative creation of “substitute” intellectual property rights is explored. By doing this, the contributors interrogate the very boundaries that constitute what IP rights traditionally protect and cover. Should all investments in anything intangible and “intellectual” – such as product shapes, personality, data and organization of an event - be protected as property? Should there be qualitative differences among the types of investments and achievements? ..."
Further details may be obtained from the book's web page here.


Title: Intellectual Property Rights: Legal and Economic Challenges for Development
Editors: Mario Cimoli, Giovanni Dosi, Keith E. Maskus, Ruth L. Okediji and Jerome H. Reichman
Publisher: Oxford University Press
"In recent years, Intellectual Property Rights - both in the form of patents and copyrights - have expanded in their coverage, the breadth and depth of protection, and the tightness of their enforcement. Moreover, for the first time in history, the IPR regime has become increasingly uniform at international level by means of the TRIPS agreement, irrespectively of the degrees of development of the various countries.

This volume, first, addresses from different angles the effects of IPR on the processes of innovation and innovation diffusion in general, and with respect to developing countries in particular. Contrary to a widespread view, there is very little evidence that the rates of innovation increase with the tightness of IPR even in developed countries. Conversely, in many circumstances, tight IPR represents an obstacle to imitation and innovation diffusion in developing countries.

What can policies do then? This is the second major theme of the book which offers several detailed discussions of possible policy measures even within the current TRIPS regime - including the exploitation of the waivers to IPR enforcement that it contains, various forms of development of 'technological commons', and non-patent rewards to innovators, such as prizes. Some drawbacks of the regimes, however, are unavoidable: hence the advocacy in many contributions to the book of deep reforms of the system in both developed and developing countries, including the non-patentability of scientific discoveries, the reduction of the depth and breadth of IPR patents, and the variability of the degrees of IPR protection according to the levels of a country's development".
Further details may be obtained from the book's web page here


Title: Sorrow Might Come in the End: legal cases in the music and entertainment industries
Author: Jeremy Grice
Available via Amazon
"From Spandau Ballet to the Spice Girls, from Who Wants to be a Millionaire to Apple Corps and Apple Computer, entertainment companies and musicians are no strangers to the Law Courts. "Sorrow Might Come in the End" explores a range of UK cases which actually reached court before being resolved; it examines the primary source of court transcripts, explains the background to the cases and analyses the judgment, highlighting the legal principles which were under examination. It evaluates the impact of the cases for the music and entertainment industries, and discusses what can be learned. It will be of particular interest to students of contract and intellectual property law, as well as to anyone with a fascination for music and entertainment".
This book's Amazon web page is here

Magmatic v PMS: no RCD infringement on appeal

Authors: David Stone and William Corbett (Simmons & Simmons LLP)

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, Court of Appeal, England and Wales, 28 February 2014; Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 408, Court of Appeal, England and Wales, 10 April 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu103, first published online: June 17, 2014

The Court of Appeal has overturned the High Court's judgment that a registered Community design (RCD) was infringed by a copied child's ride-on suitcase and has refused permission to appeal to the Supreme Court.

Legal context

The Court of Appeal has held that Magmatic's registered Community design (RCD) for its well-known Trunki child's ride-on suitcase is not infringed by a competitor product sold as the Kiddee Case.

Magmatic sought permission to appeal to the Supreme Court. The Court of Appeal refused on the basis that the case does not ‘raise any point of general public importance’. Magmatic has sought permission from the Supreme Court.


In 1997, a designer created an original design for a child's ride-on suitcase. This design was developed and subsequently commercialized by Magmatic under the trade mark Trunki. The Trunki case proved highly successful: Magmatic estimated that in 2011 approximately 20 per cent of three-to-six-year-olds in the United Kingdom possessed Trunki luggage. The product is now sold in 97 countries.

PMS admitted that its Kiddee Case was inspired by the Trunki product. However, it claimed to have instructed its designer to come up with something different from anything else on the market. PMS began selling the Kiddee Case in late 2012. Magmatic commenced proceedings in February 2013. In July 2013, the High Court (Arnold J), in a ‘clear and concise judgment’, ruled that PMS infringed Magmatic's RCD, and UK unregistered design rights (UK UDR) in relation to the Trunki's clasps, internal straps, internal pouch and tow strap (PMS conceded copyright infringement in relation to a safety notice). PMS appealed only the issue of RCD infringement on two very narrow points: that the trial judge had wrongly interpreted the RCD and had improperly excluded from his consideration of infringement the decoration on the Kiddee Case.


How should a tribunal interpret an RCD? The Court of Appeal emphasized that the scope of protection of an RCD is determined by the representation of the design. As Kitchin LJ held, ‘[a]t the end of the day, the scope of the design must be determined from the representation itself … the scope of the protection must be discerned from the graphical representation and the information it conveys.’ Some assistance is available from drafting conventions, such as dotted lines, he said. But colour, Kitchin LJ noted, ‘presents further challenges’.

To assist in interpreting the RCD in this case, Kitchin LJ reviewed two previous Court of Appeal RCD cases, where the interpretation of black and white line drawings was in issue.

In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, the RCD was for an air freshener shown in a black-and-white line drawing: it was held to protect the shape of the design in any colour. In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, the RCD was again depicted in black-and-white line drawings. Apple had contended that a lack of ornamentation was a feature of its design: accordingly, any decoration on the Samsung tablet was held by the High Court and Court of Appeal to constitute a difference (and it was irrelevant that this ornamentation included a trade mark).

In the present case, Magmatic's RCD represented the design using monochrome 3D renders (which showed how light would play on the surface of the suitcase), perhaps more accurately described as ‘greyscale’. The shape was unadorned with any surface decoration, but the wheels and the strap were shown in a darker shade than the sides of the case.

The Court of Appeal held that the trial judge's first error was in his interpretation of the RCD, enumerated as follows. First, he failed to recognize that Magmatic's RCD looks like a horned animal (the Court of Appeal described this as ‘plainly one of its essential features’). Secondly, although the monochrome representations meant that the RCD protected the shape in any colours, the 3D renders indicated a ‘distinct contrast in colour’ between the wheels and strap on the one hand and, on the other, the rest of the suitcase. Accordingly, the Court of Appeal held that the wheels were ‘a rather striking aspect of the design as a whole’, which the trial judge had failed sufficiently to take into account.

The Court of Appeal identified the trial judge's second error in his comparison of the RCD with the Kiddee Case. Kitchin LJ held that it was ‘wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives. At least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears’. Kitchin LJ held that the Kiddee Case's ladybird and tiger versions were ‘plainly not’ horned animals and produced ‘very different’ overall impressions.

Having identified errors of principle, the Court of Appeal felt it was free to form its own view. Kitchin LJ concluded as follows: ‘[t]he impression created by the [RCD] is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.’

Practical significance

The Court of Appeal has continued its unbroken anti-RCD run: never has it found an RCD to be infringed. Practitioners who hoped that recent personnel changes on the court may herald a less interventionist and more design-rights-friendly approach will be disappointed with this decision.

Did the trial judge commit an error of law? The first error listed by the Court of Appeal was that the trial judge ‘failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal’. First, he did no such thing; the trial judge observed that ‘the ridge and the horns form important parts of its appearance’ and noted ‘the nose and tail of an animal’ shown in the RCD. Both quotes come from paragraph 64 of the trial judgment, excerpted in full by the Court of Appeal in its decision. The Court of Appeal also excerpted the trial judge's conclusion (para 77 of the trial judgment): ‘the overall impression the Kiddee Case creates shares the … prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the [RCD]’. Indeed, at paragraph 8 of its decision, the Court of Appeal notes ‘[a]s the judge recognised, one of the striking features of the [RCD] is that the handles and the clasps give the suitcase the appearance of a horned animal’ (emphasis added). It is difficult to reconcile these findings. In any event, even if this ‘fail[ure] to appreciate’ was an error, it was not an error of law but merely a difference in emphasis.

Perhaps more worrying is the Court of Appeal's reference to the RCD being ‘clearly intended to create the impression of a horned animal’ (emphasis added). As the Court of Justice made clear in C 488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL [2012] E.C.D.R. 17, the intention of the designer is irrelevant to the interpretation of an RCD.

There is a further sub-point: the Court of Appeal felt that the trial judge underplayed the contrast in shade between the wheels and the rest of the body of the suitcase, and in this they may be correct. A greyscale 3D computer representation of the shape of a product is not to be construed in the same way as a black and white line drawing. For example, a black-and-white line drawing does not show features of ‘texture’ or ‘materials’ (Article 3(a) of the Community Design Regulation (CDR)), whereas these may be shown in a greyscale model. Also, and relevantly here, contrasting shades may be shown—for example, darker wheels against a lighter case. Kitchin LJ noted, ‘the wheels are, to my eye, a rather striking aspect of the design as a whole’. To be fair to the trial judge, at first instance PMS did not list the contrasting wheel shade among the differing features on which it relied. Further, as noted by the trial judge, ‘[i]n the case of the wheels, the real difference is that the wheels on the Kiddee Case have covers over them.’ So the informed user would not have paid much attention to the wheels in any event.

Overall, this appears to have been a difference in emphasis, rather than an error of law.

The second error of law identified by the Court of Appeal is the more important one, as it may have ramifications beyond this dispute. The Court of Appeal found that the trial judge, in comparing the RCD with the Kiddee Case, was wrong to disregard the surface decoration on the later product. Kitchin LJ noted, ‘[a]t least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears.’ No authority is given for this statement, which reads dangerously like trade mark law. Indeed, the finding runs contrary to authority, including Procter & Gamble in the Court of Appeal, to compare like with like. A copyist ought not to avoid infringement by applying different markings to a product, particularly where the RCD protects shape only, devoid of decorative elements.

It is possible to look at this point another way. The CDR provides protection for ‘the appearance of the whole or a part of a product’. In filing an RCD devoid of surface decoration, Magmatic claimed protection for that ‘part’ of the product, and not the surface decoration ‘part’. In undertaking a like-with-like comparison, the trial judge was therefore right to avoid the surface decoration on the Kiddee Case. In other words, a greyscale RCD for a distinctive motor vehicle shape is still infringed by an identically shaped vehicle, even if the later vehicle is painted with zebra stripes.

In our view, the Court of Appeal was wrong to look at the ladybird and tiger markings: these should have been excluded from the comparison made by the informed user.

It is also of little assistance to practitioners that the Court of Appeal caveated its decision with ‘[a]t least in the case of this particular registered design’. Designers, practitioners and the design protection system benefit from clear tests (to the extent that is possible), and the Court of Appeal has here elucidated nothing that takes this particular design away from the usual ‘like-with-like’ comparison.

The Court of Appeal refused permission to appeal to the Supreme Court, noting briefly: ‘[w]e have reached a conclusion different from that of the judge as to the scope of the [RCD] and the issue of infringement. However, this finding is specific to the circumstances of the present case and we do not believe it raises any point of general public importance.’ It may thus be that this case will be confined to its facts, not being seen as signalling a move away from the established case law on comparing like with like.

In our view, the trial judge made neither error attributed to him, but had made an error. However, that finding did not influence his decision and therefore played no part in the appeal. The Rodeo, an earlier ride-on suitcase created by the Trunki designer, had been disclosed at an awards event in 1998. The trial judge found that that disclosure was not ‘obscure’—it could ‘reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’. Although admitting that the Rodeo was therefore a prior design for novelty purposes, Magmatic argued that the Rodeo should not be included in the design corpus, because it would not have been a design with which the informed user was familiar. The trial judge agreed, finding support in the General Court's comment in Case T-9/07 Grupo Promer Mon Graphic SA v Office for Harmonization in the Internal Market (OHIM) [2010] E.C.D.R. 7 that the informed user ‘has some awareness of the state of the prior art’ (emphasis added), and the Court of Justice's comment on appeal in that case (Case C-281/10 P E.C.R. I-10153) that the informed user ‘possesses a certain degree of knowledge with regard to the features which those designs normally include’ (emphasis added).

In our submission, there is nothing in a purposive construction of the CDR, or indeed, in Grupo Promer, that supports such a contention. In order to assess the validity of an RCD, it is necessary to compare it against each prior design (Advocate General in Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd 2 April 2014 (unreported)). If any one of those prior designs creates the same overall impression on the informed user as the RCD, that RCD is invalid. But it cannot be that an RCD that survives such an invalidity attack is then protected from the ‘kindred prior art’ that may be obscure-ish, but not obscure. For the invalidity test to be the flipside of the infringement test (Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), para 26), the ‘design corpus’ must include all the ‘prior designs’. As a practical matter, the legislature cannot have intended that tribunals should have to apply an additional filter once a prior design is found not to be too obscure. As noted above, this did not affect the trial judge′s findings, because he considered the single prior design, despite not considering it part of the design corpus of which the informed user would be aware.

The Court of Appeal's decision is a timely reminder of the attention to be paid when filing for RCD protection. Many practitioners consider that a black line drawing on white paper gives the broadest scope of protection. Had Magmatic filed for the Trunki in that form, it would likely have survived an invalidity attack based on the Rodeo, as well as leading even the Court of Appeal to a finding of infringement.

It was undisputed that PMS took a version of the Trunki suitcase, and Arnold J found that it had been copied. Modifications were made, but Arnold J found that they were not enough to avoid infringement. The Court of Appeal has disagreed, in a decision that will not please designers, originators or practitioners.

Scottish Court of Session considers whether patent can be interpreted without expert evidence

Author: Susan Snedden (IP & Technology Department, Maclay Murray & Spens LLP); Susan Snedden acted for the defender in this case.

Total Containment Engineering Limited v Total Waste Management Alliance Limited [2013] CSOH 135, Court of Session, Scotland, 13 August 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu104, first published online: June 17, 2014

The court decided that, in certain cases, it may be able to rule on questions of patent interpretation without first hearing expert witnesses, but not in this case. The pursuer's pleadings set out a relevant case of patent infringement and the case could proceed to a proof (trial).

Legal context

The Court of Session has jurisdiction over disputes relating to EP (UK) and UK patents.

In Scottish proceedings, preliminary pleas are considered at debate, which takes place prior to a proof (ie trial). One such plea is that the pursuer's pleadings do not set out a relevant case. The basis of the relevancy plea is that, even if everything in the pursuer's written case is true, it does not entitle him to the remedy sought. The onus of proof is on the party raising the plea.

The court must assess the pursuer's pleadings against the substantive law, to determine whether a legally relevant case is set out in the pleadings.

In this case, the defender argued that the pursuer had failed to set out a legally relevant case of patent infringement. In order to accept that the case was irrelevant, the judge would have to decide how two of the patent integers should be interpreted.


Total Containment Engineering Limited (the pursuer) brought a patent infringement against Total Waste Management Alliance Limited, a Scottish company (the defender).

The patent in suit was EP (UK) 1 144 869 B1, relating to technology for handling and transferring oil well drill cuttings. Claim 1 read:
Apparatus for handling drill cuttings in a tank and transferring them therefrom, the apparatus comprising: pump means having a chamber, an inlet opening into said chamber, a rotatable impeller disposed in the chamber and being driven by a motor to draw drill cuttings contained in the tank into the chamber, a discharge outlet on one side of said chamber, and manipulating means operatively associated with the pump means for moving at least the inlet of the pump means vertically, horizontally, and/or laterally within the tank; wherein the manipulating means includes swivel means for orienting the pump means within the tank. It required swivel means for orienting the pump means within the tank, and also required manipulating means for moving the inlet of the pump means within the tank.
The allegedly infringing product was the defender's cuttings storage and transfer unit. This was a storage tank for holding drill cuttings, with a pump flanged to the bottom of the tank in a fixed position. The pump was a dual cylinder positive displacement pump, comprising a hopper, two cylinders, two pistons and a swing tube. Drill cuttings fell from the tank into the pump hopper under force of gravity. The cuttings were drawn into one cylinder, then pushed by a piston from the cylinder into the swing tube and onwards out of the pump. The swing tube moved between the two cylinders so there was a constant flow of drill cuttings into the cylinders and, from there, into the swing tube.


The defender's position was that to succeed, the pursuer would need to prove that the inlet to the pump means moved within the tank, and also that the pump means could be oriented within the tank.

An ordinary interpretation of the word ‘inlet’ indicated that it was the point at which drill cuttings first entered the pump. Based on the pursuer's pleadings about what constituted the tank and the pump, the inlet had to be the point at which the tank and hopper connected. The pursuer admitted that the hopper was bolted onto to the tank and could not move.

Similarly, the pump means were located below the tank in a fixed position and could not be oriented within the tank. At best, only the swing tube could be oriented, not the entire pump means.

The defender argued that the pursuer did not plead that ‘inlet’ or ‘orienting the pump means within the tank’ were technical terms with a special meaning which would be known to the person skilled in the art (PSA). Nor did they plead any relevant background information or common general knowledge that would affect the PSA's interpretation of these integers. As such, these terms should be given their ordinary meaning and the case should be held to be irrelevant.

In response, the pursuer argued that ‘inlet’ could refer to the admission of drill cuttings into any part of the chamber of the pump. It did not have to be the point at which drill cuttings first entered the chamber. Similarly, it was sufficient if part of the pump means could be oriented within the tank. The swing tube could be so oriented. On that basis, the movement of the defender's swing tube and its inlet satisfied these integers.

The pursuer advised that it had expert evidence to support its position on interpretation and argued that it would be inappropriate for the court to conclude that the case was irrelevant without first hearing this evidence.

The court agreed with the pursuer that its pleaded case was not irrelevant. Lord Malcolm quoted from Lord Hoffmann, at paragraph 32 of Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (HL), in holding that the meaning of the words used in a patent was:
… highly sensitive to the context of, and background to, the particular utterance. It depends not only upon the words the author has chosen, but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.
Lord Malcolm observed that this approach to interpretation meant that the court should be cautious about accepting any contested invitation to reach conclusions about the interpretation of patent integers without first hearing evidence.

He continued at paragraph 18:
It is well understood that any witness, expert or otherwise, should be aware of, and should not attempt to supplant the proper jurisdiction of the court. However, it is another thing to say that the court need not hear from such witnesses. In their absence, how can the court put itself into the position of the notional addressee?
He also noted at paragraph 20:
There may be cases where the ordinary meaning of the words used in a patent is so straightforward and clear that the precise basis for a contrary interpretation must be narrated in detail on record before an inquiry can be contemplated; but in my view, this is not such a case. The pursuer sets out its construction of the claims, and contends that before resolving the issues, the court should allow itself to be educated as to relevant technology and processes. Mr Clark submits that, thereafter, the proposition that the lower end of the swing tube is the ‘inlet’ of the pump, and that it includes ‘manipulating’ or ‘swivelling’ characteristics within the meaning of the claims, will be easier to understand. I cannot gainsay that.
Thus, he concluded, the case was legally relevant, adding that the provision of witness statements and expert reports would ensure the defender had fair notice of the pursuer's case in advance of the trial.

Practical significance

To understand the practical significance of this case, it is instructive to note what happened after the debate. Lord Malcolm ordered the pursuer to provide its relevant expert evidence in advance of the usual exchange of expert reports and witness statements between the parties. Thus the defender was able to see the pursuer's evidence on infringement and interpretation before finalizing its own expert evidence.

A number of significant points can be taken from this decision and its aftermath. First, the Scottish courts are likely to adopt a cautious approach to reaching a view on questions of interpretation in the absence of any expert evidence. That said, the court acknowledged that there may be some cases in which it could do so. It thus remains possible that an infringement action could be dismissed at debate, without the need for a full trial on the issues.

Secondly, the order issued by the judge subsequent to the debate highlights that whilst parties may not be required to include full details of their position on interpretation in the pleadings, taking this approach is risky. If they fail to do so, they may be ordained to provide their expert evidence in full before the other party provides its expert evidence. This can hand a tactical advantage to the other side which will then benefit from obtaining full notice of the opposing party's expert evidence prior to the finalization of their own evidence.

Finally, the Scottish IP court rules were amended in 2012 to provide the IP judges with complete discretion to make any orders they wish in IP cases. In addition, every case is now heard by the same judge from beginning to end. As a result, the judges have a more in-depth knowledge of the cases, which allows them to tailor the procedure to each case. These changes have greatly improved the speed and efficiency of litigating IP disputes in the Scottish courts.

Abstracts for IP articles: a discussion is underway

As with art, so too with legal writing:
not all abstracts are easy to understand
A recent blogpost on the IPKat has raised an interesting and important series of questions concerning abstracts that accompany articles that are published in specialist journals. What is their function? Is it to lay the subject matter of the article open to the point that anyone with a general interest in the subject area can with little effort gauge the article's specific subject-matter? Or should it be addressed, in terms of its vocabulary and content, only to those whose interests lie closest to those of the author?

Like most serious journals, JIPLP publishes abstracts in relation to its articles. It is fair to say, however, that less attention is often given to their creation and function both by authors and by the editorial staff.  There is no standard recipe, as it were, or good practice.  Some abstracts read almost like advertisements for their authors, while others describe the area of intellectual property that the article covers but give relatively little clue as to what the article has to say about it.  Others again appear to be a cut-and-paste exercise taken from one or more introductory paragraphs of the article itself.  Egregious abuse of abstracts by authors is not difficult to recognise and can be dealt with, but that's about as far as it goes.

Since JIPLP is a journal that seeks to embrace law and practice, but which publishes abstracts both by practising lawyers and by academics, there is bound to be some inconsistency in terms of style of content -- but it's not clear whether this is a sign of flexibility or of inconsistency.

JIPLP is starting a discussion on its LinkedIn Group on abstracts for its IP articles and we will greatly appreciate your comments.  Do you use them at all? If so, how far do you rely on them when deciding whether and, if so, when, to read an article?  Can we improve our abstracts in terms of length, content and general thrust? Please let us know!

Calling all authors who cite Court of Justice rulings: an important notice

Keen Europe-watchers and readers of the IPKat weblog (here and here) will by now have noticed that a new scheme has been introduced for the citation of legal decisions. It's called the European Case Law Identifier -- ECLI for short -- and its developers explain it thus:
The European Case Law Identifier (ECLI) has been developed to facilitate the correct and unequivocal citation of judgments from European and national courts. A set of uniform metadata will help to improve search facilities for case law.
You can read all about it on the European E-Justice website here.

The Court of Justice of the European Union (CJEU) is already employing this citation system. Accordingly, JIPLP will be employing it too, for CJEU decisions.  Our policy is as follows:

  • Articles and Current Intelligence notes submitted on or after 1 July 2014 will be expected to use ECLI citations for CJEU decisions;
  • Articles and Current Intelligence notes submitted up to 30 June 2014 or already accepted for publication and in the course of production can be left as they are, though authors will be invited to consider amending their citations of CJEU decisions where (i) they are few in number and (ii) the making of the amendments will not delay publication.

As and when other courts and organisations use ECLI citations, we will notify authors accordingly.

I appreciate that this will cause a good deal of inconvenience and annoyance to a large number of contributors, but the introduction of ECLI citations is a good and overdue idea and will make it far easier for the JIPLP editorial staff to handle the many different ways in which authors currently choose to cite CJEU cases. Within a few months of their appearance in the journal, readers too will come to appreciate their advantages.

The published patent application – a basis for injunctive relief?

The guest Editorial for the July 2014 issue of JIPLP is by editorial board member Karsten Königer (Harmsen Utescher).  This is what he has to say:
The published patent application – a basis for injunctive relief?

The reader of the European Agreement on a Unified Patent Court (UPCA), which might enter into force some day, learns in Article 32(1)(f) that the Unified Patent Court shall have exclusive competence in respect of actions for damages or compensation derived from the provisional protection conferred by a published European patent application. Since the provision expressly mentions “damages or compensation”, the reader becomes aware that there could apparently be more rights conferred by a published European patent application – for which the national courts remain competent. And indeed, according to the European Patent Convention (EPC) a published European patent application could be a sword as sharp as a granted patent: for By read by Article 67(1) EPC, from the date of publication, a European patent application provisionally confers on the applicant such protection as an examined and granted European patent in the contracting states designated in the application as published, i.e. the same rights as would be conferred by a national patent granted in those states.

Under Article 67(2) EPC, however, contracting states may confer protection which is less than that of a national patent. That protection may not be less, though, than that which would result from publication of an unexamined national patent application. The applicant must at least be given the right to claim compensation reasonable in the circumstances from an unauthorised user. This means that the contracting states are not obliged to confer injunctive relief if their national law does not provide injunctive relief in the case of an infringement of a national patent application. Apparently, all the contracting states have chosen to lower the level of protection of a European patent application to the level of the national patent application. This carries the implication that e.g. in Germany, the UK and the Netherlands, there is no injunctive relief in the case of an infringement of a European patent application. In France, however, as I understand it, a seizure can be ordered on the basis of a published European patent application; in Poland injunctive relief seems possible. Most of the national laws of the contracting states provide only compensation. Obviously the majority of the European national legislators, and especially the German legislator, were sceptical about providing injunctive relief as long as the European patent application has not been examined and found to meet the criteria of novelty and inventive step.

It seems to me that it is a good compromise between the interests of the inventor and the interests of third parties that the published patent application is a basis for compensation, but not for injunctive relief. However, it is desirable that full harmonisation with regard to the rights conferred by a European patent application is reached. The UPCA, as I understand it, does not harmonise or “unify” the national laws with regard to the rights conferred by a European patent application – not even with regard to claims for compensation because of infringement of a European patent application for which the Unified Patent Court will have exclusive competence; the Unified Patent Court will thus have to apply the national law for each country concerned.

Such harmonsation, however, in my view, would be incomplete if there was no harmonisation with regard to utility models. In Germany, a European patent application can still indirectly give rise to injunctive relief: Under German law, the proprietor of a European patent application can (with regard to product claims) “branch off” a German utility model. The utility model is registered without examination – and gives rise to injunctive relief for the proprietor if the utility model is infringed. In utility model infringement litigation, the defendant can allege nullity of the utility model as a defence. This admissibility of the nullity defence corresponds to the non-examination before registration. However, the defendant bears the burden of proof. Thus it is the defendant who has to make the effort to proof that the invention did not meet the requirement of inventive step.

It seems inconsistent to me that the German legislator on the one hand has reduced the level of protection of a published European patent application while on the other hand it has given the applicant the opportunity to have a utility model registered and to seek injunctive relief. Utility model law in Europe – the harmonisation of which should return to the European Union's agenda – should be consistent with the (ideally harmonised) rights conferred by a published European patent application.
The full list of contents for this issue can be found here.

July JIPLP now online: check it out!

The July 2014 issue of the Journal of Intellectual Property Law & Practice  (JIPLP) is now available online to those folk who have subscribed to the electronic edition. The printed version will be out in a couple of weeks. As usual, non-subscribers can purchase temporary access to articles and Current Intelligence notes via the JIPLP website, here.  This month's Editorial will be posted on this weblog in the near future.


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