How to justify decisions while rejecting evidence: a further comment

Earlier this year the jiplp weblog posted a Current Intelligence note, "How to justify decisions while rejecting evidence" by Tomasz Rychlicki (Patent and Trade Mark Attorney, Poland, and a long-standing member of the JIPLP Editorial Board). This blog has now received a response from two Polish practitioners, Jakub Mrozowski and Michał Siciarek, both of LDS Lazewski Depo & Partners, Warsaw.  

This blog is pleased to reproduce Jakub and Michal's response in full below, and thanks them for taking the trouble to supply this most instructive comment. This is what they write:
With reference to this note from Tomasz Rychlicki posted via JIPLP blog and the corresponding discussion on the JIPLP Readers and Writers LinkedIn Group regarding the decision of the General Court in Case T-235/12CEDC International sp. z o.o. v OHIM (Shape of a blade of grass in a bottle), as insiders to this case, we would like to provide a short commentary on the interesting points not covered in the note.

The decision in this case touched upon three important issues. As Tomasz rightly noted, to a large extent the case concerns the issue of the admissibility of evidence not filed within the initial deadline (filed together with the appeal to the OHIM’s Board of Appeals) and the issue of proper justification of OHIM’s decision when excersing its discretionary power to either allow or deny belated evidence. However, this decision represents also an important point in the discussion on genuine use of several trade marks on the same product, in particular with regard to 3D trade marks.

Procedural issues

As some readers may recall, there was a time when the General Court used to consider all sorts of evidence submitted together with the appeal to the Board of Appeal as being submitted in due time (due time = in time to file the appeal). Since, however, OHIM did not greatly appreciate this practice, it appealed one of the decisions of the General Court and so this liberal era has ended with a Solomonic judgment delivered by the Grand Chamber of the Court of Justice in Case C29/05 P Kaul. The Court of Justice of the European Union (CJEU) wisely considered the arguments of both sides and said that OHIM may accept or reject belated evidence, but that it needs to present a justification of its decision to do so and that certain situations or factual elements may favour taking belated evidence into account.

From that time onwards, the case-law has been a bit shaky, but seems to be settling down again to a fairly liberal approach. The decision in Case T-235/12 provides a thorough overview of the recent case-law in this respect and also analyses a number of arguments of the parties relating to situations in which the belated evidence should or should not be accepted. We will thus not go into more detail in this respect, but rather encourage anyone struggling with the belated evidence issue to take a look at the judgment.

Genuine use of 3D trade marks

However, we would like to bring the readers attention to essential issue underlying the decision and in the proceedings before the OHIM, which is that of the proper standard of assessment of genuine use of the 3D trade marks. 
The case concerned the opposition against a CTM application for a 3D trade mark based on earlier 3D trade marks, each representing a simple bottle with a single blade of grass inserted inside:

 Above: one of the earlier national trade
marks (left); the contested 3D mark (right)
These trade marks were all registered without labels, but were only used on the market with labels with various word and graphical trade marks on them. As proof of use request was filed, OHIM had to analyse the issue of genuine use of earlier 3D trade marks. During the opposition proceedings the opponent presented numerous items of evidence, but only with visuals of the product in front view where blade of grass is visible behind the label:
Examples of genuine use presented before
OHIM's Opposition Division
The Opposition Division found that the evidence provided was insufficient to establish genuine use of the earlier 3D mark and that the presence of a label containing the term ‘żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it was registered. On appeal to OHIM’s Board of Appeal the opponent supplemented the evidence with visuals of the product from both sides and from the back, including affidavits:
Visuals presented together with the appeal to OHIM's Board of Appeal 
The Board of Appeal still however found that the opponent did not prove genuine use (and more specifically, the nature of use) of the earlier 3D trade marks, basing its opinion on the analysis of images of the trade marks in views from front only and finding that the label had overshadowed the blade of grass placed inside the bottle. OHIM did not take into account new items of evidence submitted together with an appeal presenting views of the product from various sides (where the label did not cover the blade of grass) and OHIM failed to present any reasoning in this respect.

One of the arguments relied upon in the application for annulment was that three-dimensional trade marks may be perceived by consumers from various sides, including sides where the blade of grass is clearly visible and label does not cover it in any way. All in all, the nature of 3D trademarks requires the analysis of the proof of use perceived from various sides, while the OHIM its analysis to the front view only, which is characteristic for figurative trademarks. The Court agreed with this argument and presented its opinion in various paragraphs, in particular:

[64] First, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, were, prima facie, likely to be truly relevant to the outcome of the opposition brought before OHIM since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment ...:  first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’; second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’; and, third, that ‘in those circumstances, the applicant had not proven the nature of use of its earlier three-dimensional French mark’.

[65] It is important to note in that regard that the three-dimensional nature of a mark such as that at issue precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, it must therefore be taken into account not as a reproduction of how it is viewed in two dimensions, but rather as a presentation of how it is perceived in three dimensions by the relevant consumer. It follows that presentations from the side and the back of a three-dimensional mark are, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that mark and cannot be rejected solely on the ground that they are not reproductions from the front.

All in all, the decision in Case T-235/12 gives the holders of 3D trade marks yet another argument in favour of the possibility of joint use of several trade marks at the same time which is still considered genuine. And this fits well in the discussion on genuine use of several trade marks, present in decisions such as Cases T-29/04 (CRISTAL), C-553/11 (PROTI), C-12/12 (LEVI) or C-252/12 (SPECSAVERS).

And recently, paragraph 65 of the decision in Case T-235/12 found its way to the Court of Justice Annual Report for 2014 (among few other cases from the IP field). The quote can be found in the CJEU Annual Report on page 146.

We look forward to readers’ comments and examples of other cases touching upon this very interesting area.

Priority certificates and non-intrusive IP: an article and a follow-up

In "Priority certificates: a proposal for non-intrusive forms of IP", published in the Journal of Intellectual Property Law & Practice10 (6): 429-447, Gelu (Jerry) Comanescu and Kelly G. Hyndman argue for a revolutionary approach to the recognition of the creative contributions of inventors and scientists.  According to their abstract:

A new and non-intrusive form of IP is proposed—the priority certificate—covering unprotected subject matter such as scientific discoveries and abstract ideas. In settings such as the academia, R&D and the arts, it is important to ascertain and formally acknowledge the person entitled to priority with respect to a given discovery or abstract idea.

A priority certificate is a document attesting and formally acknowledging that the person named in such certificate is the first to discover a certain phenomenon, the first proponent of an abstract idea or theory, etc. A private party, such as a university, may grant priority certificates to parties making claims of priority. Upon examining an application submitted by a claimant, the grantor issues a priority certificate stating that claimant is the first discoverer, creator or author of the claimed subject matter. This way, the priority certificates confer upon the claimant formal recognition and prestige.

Priority certificates do not confer any exclusive economic rights (eg to sell or manufacture a product). Consequently, they do not create a monopoly and do not have the negative side effects associated with monopolies. They may be implemented by private parties (eg universities) via existing laws, such as contract law, without the need for new legislation or government action. The public can freely use any idea or discovery claimed in a priority-certificate.
JIPLP has since received the following information from the authors:

" ... The JIPLP reviewer and others have pointed out a couple of issues and difficulties re the practical implementation of such service (e.g. the high cost of examining priority-certificates and the expenses associated with just getting a start).

Over the past six months I worked on a practical implementation of the proposed priority-certificates service via a “demo website” (see While developing the demo website / system, I have found a couple of practical solutions to the above mentioned concerns re the priority-certificate system.

In a nutshell the system includes four priority related services:
(1). The personal-priority-accounts – (refers to the system described by reference 19 of my article)(2). The priority-claims publication system - A system allowing innovators and scientists to publically assert a claim of priority re their ideas & discoveries. This way the claimants: (a). put the others “on notice” of their priority claims; and (b). receive feedback / comments from other scientists re their priority-claims, thereby finding whether others have conceived the ideas before them. The priority-claims are not examined. The claimant requests “examination” (i.e. a priority-certificate) only when convinced that it is worth the effort and the expense.(3). The priority-certificates system (as described in the JIPLP article).(4). The rating / ranking of ideas & scientific discoveries (analogous to the EPO “European Inventor Award” system but focused on specific fields).
Some of the important features of these services are the “priority-claims database” and the “priority-certificates database”, allowing scientists to view the new ideas & discoveries in an organized manner.

From a practical point of view it is important to note that the first two services are easy to implement (inexpensive and quick implementation) and can be used to prepare the ground for the more difficult implementation of an examination system. The demo website still needs work (I have hired a “computer person” to help me with that – hope to be ready in a couple of months).

I would highly appreciate any comments and feedback from you about this project".
If you would like to comment or offer any feedback, please you can contact Mr Comanescu by email at and by cellphone at +202-754-2064.

Trade mark infringement as a proper reason for non-use

Author: Meriem Loudiyi (INLEX)

Chronopost v DHL Express France [2015] R 2425/2013-4, The Fourth Board of Appeal of OHIM, 28 January 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv114, first published online: June 23, 2015

The Fourth Board of Appeal of the Office for Harmonisation in the Internal Market revoked a decision of the Cancellation Division that had cancelled the Community trade mark WEBSHIPPING, owned by Chronopost, on the grounds of non-use. The Board of Appeal upheld the appellant's position that trade mark infringement incurred by its direct competitor constituted a proper reason for non-use. Additionally, the Board of Appeal pointed out that the concept of ‘proper reason for non-use’ was not limited to the cases covered by the previous rulings.

Legal context

Article 51 of the Community trade mark (CTM) Regulation 40/94 states that a CTM shall be declared invalid on application to the Office for Harmonisation in the Internal Market (OHIM) or on the basis of a counterclaim in infringement proceedings if in a continuous period of five years the trade mark in question has not been put to genuine use in a significant part of the European Community in connection with the goods or services in respect of which it is registered, unless the owner of the trade mark proves that there is a proper reason that justifies this non-use.


Chronopost and DHL (France) both provided international express mail services, and were thus direct competitors in this market. Chronopost was the owner of the CTM WEBSHIPPING (registered on 7 May 2003) and of the French trade mark WEBSHIPPING.

In September 2004 Chronopost brought an action against DHL before the Paris Court of First Instance alleging infringement of its CTM. They wanted an order that DHL pay damages for the illegal use of this trade mark, as well as prohibiting the use of that trade mark in the Community. In March 2006 the court held that DHL had infringed Chronopost's French trade mark, but did not adjudicate on the infringement upon the CTM. On appeal by Chronopost the Court of Appeal of Paris, acting as a second instance CTM Court, held that DHL had infringed both the French trade mark and the CTM, and prohibited DHL from using this trade mark in the French territory, subject to a periodical penalty in the event of infringement. A subsequent appeal by DHL to the French Supreme Court was dismissed on 23 June 2009.

In July 2012 DHL brought before the Cancellation Division of OHIM a revocation action seeking to cancel Chronopost's CTM on the ground of non-use. Invited to provide evidence of use of this trade mark, Chronopost was unable to provide any proof, but alleged that the non-use of its CTM was justified by ‘proper reasons’.

The reasons invoked by Chronopost were the infringement of its trade mark by DHL as well as the fact that the trade mark dispute had been going on since 2004. In other words, Chronopost underlined the fact that they had been prevented from using their own mark due to the intensive use which had been made of the trade mark by DHL in the whole European Community in relation to identical products and services. Indeed, it could not freely use the subject mark, as the consumer would not understand that identical services could be provided under the same trade mark by the two main actors and competitors in this field of activity.

In October 2013 the Cancellation Division upheld DHL's action and revoked the rights of Chronopost over the mark. The Cancellation Division held that the concept of proper reasons for non-use must be interpreted narrowly, the only two proper reasons for non-use being force majeure and abnormal bureaucratic obstacles. Accordingly, it considered that an infringement procedure was not a proper reason, and cancelled the CTM for non-use.

Chronopost appealed in December 2013 to the Fourth Board of Appeal, which upheld it on the basis that the fact that the mark was already used by an infringer completely prevented the legitimate owner from using its own trade mark. It thus recognized trade mark infringement as a new ‘proper reason’ justifying the non-use of the trade mark.


This decision is innovative, given that it recognizes trade mark infringement as a new ‘proper reason’ for non-use. As the Board of Appeal mentioned in its decision, the CTM Regulation does not define the concept of ‘proper reason’ for non-use. This concept was defined by the Court of Justice of the European Union (CJEU) in the landmark case of Le Chef de Cuisine (Armin Häupl v Lidl Stiftung & Co. K [2007] Case C 246/05). In that decision, the CJEU considered that, for proper reasons for non-use to apply, it was not necessary for the obstacle to be impossible (an unreasonable obstacle being sufficient) but that this obstacle must be independent of the trade mark owner's will.

The Board also noted that, although the most usual case of proper reasons for non-use is the seemingly never-ending process for obtaining a marketing authorization for medicinal products, it would be an error to restrict this concept only to that kind of case. By doing so, the Board of Appeal enlarged the restrictive list of acceptable ‘proper reasons’ for non-use.

Notwithstanding the fact that the question regarding the definition and application of this concept had already been raised in European Instances, the Board of Appeal considered that the WEBSHIPPING case could not be covered by the previous decisions, given that for the very first time, the applicant for revocation was also the infringer.

In this sense, the Board confirmed that the fact that the mark in question was already used by an infringer was to be considered as a ‘proper reason for non-use’ for it completely prevented the legitimate owner from using its own mark freely, as there was a real risk of confusion in the consumer's mind, especially as the mark was used for identical services. Moreover, the Board highlighted that, by using the trade mark, the legitimate owner would have indirectly enhanced the value of its direct competitor's mark, constituting therefore an unreasonable obstacle for trade mark use being independent to the owner's will.

The Board therefore concluded that ordering the cancellation of such a mark would imply that a mark could be systematically infringed until it becomes vulnerable to cancellation for non-use, which would be completely unfair, for it would mean that an infringer could benefit from his illegal act.

Practical significance

Unsurprisingly, the decision of the Board of Appeal shows how European instances are open to take into consideration economic factors in their legal reasoning. This decision has the virtue of being legally founded as well as business-orientated, and therefore is the correct one.

Acronyms within composite marks and the question of likelihood of confusion

Author: Birgit Clark (Locke Lord LLP, London, UK)

Case C-20/14 BGW Marketing & Management Service GmbH v Bodo Scholz, Court of Justice of the European Union (CJEU), Opinion of Advocate General (AG) Mengozzi, 12 March 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv109, first published online: June 21, 2015

The Advocate General provides guidance on how to assess a likelihood of confusion with regard to acronyms included in descriptive composite trade marks, holding that the guidance of the Court of Justice of the European Union in Medion (C-120/04, EU:C:2005:594) is applicable.

Legal context

Under the heading ‘Further grounds for refusal or invalidity concerning conflicts with earlier rights’, Article 4(1)(b) of EU Directive 2008/95 provides that a trade mark:
shall not be registered or, if registered, shall be liable to be declared invalid: if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
Articles 3(1)(b) and (c) of the Directive provide that:
the following shall not be registered or, if registered, shall be liable to be declared invalid:… (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services.

The Bundesverband der deutschen Gesundheitswirtschaft (German Federal Association for Businesses in the Healthcare Sector) applied in 2006 to register the composite word trade mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ as a German trade mark in classes 16, 35, 41 and 43. An opposition was filed by BGW Marketing & Management Service based on its earlier word/figurative mark consisting of the letters ‘BGW’ set inside a black square, covering similar goods and services in classes 16, 35 and 41.

The opposition went through several instances and ended in the German Federal Patent Court, which found that there was a likelihood of confusion between the marks in relation to identical goods in class 16 (printed products) and identical and similar services in classes 35 and 41 (advertising services, organization of seminars and organization of competitions), insofar as these were provided to businesses operating in the health sector. In this context, the Bundespatentgericht wondered about the significance of the acronym BGW at the beginning of the composite mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ (emphasis by the author) when assessing the likelihood of confusion and found that guidance from the Court of Justice of the European Union (CJEU) was potentially conflicting.



German case-law suggested that the word combination (‘Bundesverband der deutschen Gesundheitswirtschaft’) was descriptive of the goods and services covered, while the acronym ‘BGW’ either dominated the overall composite mark or at least retained an independent distinctive role within in, in accordance with the CJEU's guidance in Medion (C-120/04, ECLI:C:2005:594), where the court had held that:
 … beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element (para 30).
However, the German judges found that matters were not quite as clear-cut, in light of potentially conflicting guidance provided in other CJEU decisions, namely Joined Cases Strigl (C-90/11, EU:C:2012:147) and Securvita (C-91/11, EU:C:2012:147) which concerned the registrability of the signs ‘Multi Markets Fund MMF’ and ‘NAI - Der Natur-Aktien-Index’ as trade marks. Notably, these cases related to absolute grounds for refusal of a trade mark due to a lack of distinctiveness and descriptiveness under Articles 3(1)(b) and (c) of the Directive, rather than relative grounds for refusal under Article 4(1)(b). The German court was particularly concerned with the direction provided in paras 32 and 38:
… in each of the two cases, the three capital letters at issue, that is to say, ‘MMF’ and ‘NAI’ respectively, represent the initial letters of the word combinations to which they are attached. Thus, the word combination and the letter sequence, in each case, are intended to clarify each other and to draw attention to the fact that they are linked. Each letter sequence is therefore designed to support the relevant public's perception of the word combination, by simplifying its use and by making it easier to remember.  …

On the contrary … the letter sequence which reproduces the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. As the referring court suggests, each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.
Applying this guidance, the court found that it was in conflict with the precedent in Medion, if the ‘BGW’ element only assumed an ancillary position in relation to the word combination, then it was illogical to assume that it could at the same time dominate the mark's overall impression and/or retain an independently distinctive role within the overall composite mark. Ultimately, this would lead to the result that there could be no likelihood of confusion between BGW and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, a conclusion with which the German court did not agree. However, the court also found that the relevant public's perception of a mark cannot vary depending on the type of grounds for refusal, and decided to suspend its proceedings and refer the question to CJEU for further guidance in a preliminary ruling.

The court referred the following question to the CJEU:
In the case of identical and similar goods and services, there may be taken to be a likelihood of confusion for the public if a distinctive sequence of letters which dominates the earlier word/figurative trade mark of average distinctiveness is made use of in a third party's later mark in such a way that the sequence of letters is supplemented by a descriptive combination of words relating to it which explains the sequence of letters as an abbreviation of the descriptive words?
Advocate-General's Opinion

Advocate-General Mengozzi's Opinion in essence agreed with the German Federal Patent Court's underlying conclusion that the guidance in Medion was applicable, whereas the precedents in Strigl and Securvita did not apply in the present case, particularly due to the different factual and legal framework of Articles 3 and 4 of the Directive. Inter alia, conducting an empirical analysis, AG Mengozzi took the view that, in Strigl and Securvita, the acronyms occupied an ancillary position in relation to the word combinations they represented. This followed from the public's perception of the existence of a link between the acronyms and word combinations, in which they were recognized as abbreviations. In view of this interdependence between the marks' mutually descriptive components, the AG concluded that the acronyms' potential distinctiveness could not be passed on to the marks as a whole and excluded the possibility that their ancillary position had any bearing on the likelihood of confusion examination.

AG Mengozzi further explained that, as usual, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case, on the basis of the overall impression conveyed by the marks, bearing in mind their distinctive and dominant components, as well as the public's perception in relation to the goods and services covered. Moreover, the assessment of the likelihood of confusion can be determined in connection with the mark's dominant component only when all other components are negligible. Applying Medion, the AG held that it was crucial whether the earlier BGW mark retained an independent distinctive position within the later composite mark or whether the acronym BGW represented a separate logical unit with its own distinctiveness due to the interdependence between the acronym and the word combination ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’.

When assessing the likelihood of confusion between ‘BGW’ and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, the AG took the view that the CJEU would have to take several factors into consideration: (i) the relevant public and its level of attention, (ii) the nature and types of goods and services involved, (iii) the position of the acronym BGW in the later mark, (iv) the descriptiveness of the word combination ‘Bundesverband der deutschen Gesundheitswirtschaft’, (v) the likelihood that the relevant public would immediately interpret BGW as acronym for the word combination, (vi) the ‘link’ between the components of the composite mark and (vii) how this interdependence would affect how the earlier BGW mark would be recalled in the mind of the consumer.

Practical significance

The German Federal Patent Court's reference is not just of academic relevance but could have potentially far-reaching effects on the assessment of a likelihood of confusion as outlined by the AG in his opinion: if the acronym, which is shared by both marks, is devoid of an independent distinctive role within the composite mark, it cannot at the same time influence the public's perception of the composite mark and its overall impression. Consequently, it will then be unable to cause a likelihood of confusion with the earlier BGW mark. However, a likelihood of confusion would logically have to be assumed where the relevant public is aware of the existence of the earlier BGW trade mark and interprets it to have the meaning the later mark and, thus, associates it with the same commercial origin.

While the AG's opinion is logical, it will have to be seen whether the CJEU will follow his reasoning to the last detail, notably whether a likelihood of confusion may only have to be assumed where relevant public interprets the earlier acronym mark as having the same meaning the later mark. Conceivably, consumers may recall the earlier trade mark and may not necessarily believe it to have the same meaning as the later composite mark and nonetheless be confused.

FRAND in India: JIPLP's first Open Access article

"FRAND in India: The Delhi High Court's emerging jurisprudence on royalties for standard-essential patents" by J. Gregory Sidak (Criterion Economics), has just been published online by the Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv096.  This is a significant "first" for JIPLP, being the first time the journal has published an Open Access article.

The article is distributed under the terms of the Creative Commons Attribution License ( and yuou can read the article in full, without payment, here.  The licence permits unrestricted reuse, distribution, and reproduction in any medium, provided the original work is properly cited.

The abstract of this article reads as follows:
Indian jurisprudence on fair, reasonable, and non-discriminatory (FRAND) licensing practices for standard-essential patents (SEPs) is at a relatively nascent stage. Unlike US and EU courts, which have dealt with cases concerning calculating a FRAND royalty for a considerable time, Indian courts and the Indian antitrust authority—the Competition Commission of India (CCI)—have only just begun to decide such cases.

In its initial orders in the first two antitrust complaints concerning SEPs, the CCI seemed to favour using the smallest saleable patent-practising component (SSPPC) as the royalty base to determine a FRAND royalty. However, in the short time since the CCI's orders, the Delhi High Court has rendered contrary decisions in two SEP infringement suits. The Delhi High Court's decisions use the value of the downstream product as a royalty base and rely on comparable licences to determine a FRAND royalty. The Delhi High Court's decisions are not only consistent with sound economic principles, but also indicate that the court is responding to the judicial and industry trends in the rest of the world.

Because the CCI is still investigating the antitrust complaints with respect to the same SEPs, the CCI could benefit from considering the legal and economic arguments in the Delhi High Court's decisions. It would be counterproductive for the emerging FRAND jurisprudence in India if the judiciary and the competition authority take opposing views toward the rights of SEP holders and SEP implementers.
This is an important step in JIPLP's publishing activities. In the past, authors have sometimes been reluctant to submit articles for publication because they did not appreciate that JIPLP -- a subscription-based title -- also accepted content on an open access basis. Such articles are not only acceptable but are actually welcomed, and will be published if they additionally satisfy JIPLP's peer reviewers of their merit.

The logo reproduced above is an unofficial open access logo, designed by the Public Library of Science

Guest editorial: When history is more about patent present than patent past

The July 2015 guest editorial is by Neil J. Wilkof (head of trade marks and information technology, Dr Eyal Bressler & Co., Israel, and a founder member of the JIPLP Editorial Board). Neil writes:
When history is more about patent present than patent past

The study of history, in addition to offering a better appreciation of what has happened in the past, is also called upon to support our justification of the present. To a large extent, however, reliance on historical narrative has not been a central part of IP research. This may be changing, no more so than in connection with the debate over the role of the patent system in contributing to innovation. Two notable expressions of how the past has been marshalled to support arguments about the current state of patent law are Professor Mark Lemley's challenge to the manner in which invention takes place and the patent justification for such inventions, “The Myth of the Sole Inventor” (Michigan Law Review 2012) and the on-going critique of the patent system by Professors Michele Boldrin and David K. Levine, as recently stated in “The Case Against Patents” (Journal of Economic Perspectives 2013). It is worth considering the role that historical anecdote plays for these scholars in promoting their respective positions on the nature of the patent system.

Lemley challenges the canon that path-breaking invention is usually the result of the creation of a lone genius supported by incentives provided by the patent system. He concludes that most significant inventions are made by multiple teams, each working independently of the other, within the context of a social milieu ripe for such invention (what he calls “near-simultaneous invention"). Lemley brings abundant examples from the 18th to the mid-20th century to argue against the notion that we have lone inventors to thank for the steam engine (James Watt), steamboats (Robert Fulton), the cotton gin (Eli Whitney), the telegraph (Samuel Morse), the sewing machine (Elias Howe), the telephone (Alexander Graham Bell), the lightbulb and the movie projector (Thomas Alva Edison), the automobile (Carl Benz), the airplane (Orville and Wilbur Wright), the radio (Guglielmo Marconi), the television (Edwin Armstrong), the television (Philo Farnsworth), the computer (John Atanasoff), and lasers (Charles Townes, Arthur Schawlow and Gordon Gould). He concludes:
“… [T]he message should be clear. Even the inventions that seem the most significant departures from the prior art are in fact generally the product of simultaneous independent invention of incremental development from multiple sources, or both” (pp. 731–733).
Boldrin and Levine are much more far-reaching in their assertions. They have been arguing for over a decade that innovation and advances in productivity do not derive from patent protection but rather what they call the “fruit of a competitive environment” (p. 1). Legal reliance on patents occurs only after an industry matures and the potential for growth diminishes. In the aggregate, a strong patent system will likely inhibit innovation and result in significant deleterious side effects.

Within this framework, they argue that inventors and innovators exchange ideas as a routine matter; it is only at a later stage that an inventor may keep secret a development in order “to corner the market for a functioning device by patenting it” (p. 10). To show this, they too refer to the Wright brothers, claiming that they maintained the secrecy of “a modest improvement in existing flight technology” (p. 10) until they received patent protection. The result, in their words, was that the Wright brothers managed “to monopolize the US market and to prevent innovation for nearly 20 years” (p. 10). Boldrin and Levine state that the role played by Marconi and his patent in connection with the development of the radio industry was similar to that of the Wright brothers in retarding development in the flight industry.

How should we understand the role in these studies played by reliance on historical anecdote? Clearly historical analysis qua historical analysis is not the intention. The respective authors are engaged in neither a reconsideration of primary historical sources nor a broad re-synthesis of various secondary historical accounts. Rather, these anecdotes are brought to support (saying “to prove” would be going too far) their respective counter-narratives about the current state of the patent system. In so doing, what they are emphasizing is the continuity of their respective narratives from an historical perspective, thereby presumably giving greater weight to their claims regarding the patent system. Whether they have succeeded is for the reader to decide.

July JIPLP now available in full -- and here's what's in it

The July 2015 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has now been published in full online, for the benefit of the journal's online subscribers who can access it now from the journal's website. Subscribers to the print version will have to wait a little longer -- but not too long! Non-subscribers are reminded that they can purchase short-term access to individual articles and other items via the JIPLP website.

This month's guest editorial, by editorial board member Neil J. Wilkof, will be published in full on this website later today.

The full list of contents for the July 2015 issue of JIPLP looks like this:

Guest Editorial

Current Intelligence


From GRUR Int.

IP in Review