Tuesday, 31 May 2016

Glee for the lawyers?

I hesitate to use the word "bullying" in the context of trade mark litigation of doubtful merit, because bullying is not something about which to speak or write lightly. But the expression "trade mark bullying" has entered common parlance, at least among trade mark practitioners, and I suppose that as a lexicographer - a label which I can't really fail to acknowledge - I am committed to accepting the way language is used, although under no obligation not to be critical about it.

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 (25 May 2016) is as unedifying a case of a big trade mark owner trying to overcome a small one irrespective of the strengths of their case. Reading this morning that the unsuccessful claimants (and unsuccessful respondents) are seeking to take the case to the Supreme Court, which one might imagine would be making lawyers rub their hands with glee. On 16 February the Court of Appeal dismissed Fox's appeal against a decision of Roger Wyand QC (sitting as a deputy judge) that they had infringed the claimant's earlier trade mark, leaving an appeal against the deputy judge's refusal to revoke the claimant's trade mark to be resolved. The Court of Appeal has now dismissed that appeal too. (A passing-off claim was unsuccessful at first instance, and the claimant's cross-appeal on that claim was dismissed.)

Essentially, the claim is about reverse confusion. The claimant opened the first of its (primarily) stand-up comedy clubs in 1994, and filed a trade mark application in 1999. The application was for registration of a series of two device marks, in which the word "Glee" was prominent and the difference lay in the colours. This proved to be the claimant's Achilles heel, leading to the claim that the registration was invalid.

The defendant produced a television show entitled "glee" [sic], perhaps hoping that if they didn't give the title a capital initial they might be able to argue that it wasn't trade mark use. Fat chance of that. It was first broadcast in the UK in December 2009, so the claimant's registration gave them a head start of over a decade. The claimant's registration was wide enough to cover the defendant's activities, or many of them - including merchandising and concerts. It looks like an open-and-shut case, and as far as infringement goes it is hard to see why on earth it should even have got to court let alone the Court of Appeal.

The answer lies in the fact that the likelihood of confusion - necessary, because the trade mark and the defendant's sign are merely similar,  not identical - provided an opportunity to mount a defence. Not a strong one, perhaps, but at least there was a possibility. The odd thing here is that the confusion goes in the opposite direction to what is normal. The senior mark was being confused with the (better-known) junior one. But that didn't matter: there was a likelihood of confusion, there were witnesses to attest to the fact that they had thought the club and the television programme were connected, or came from the same source, and that was all that was needed. Reverse confusion, like reverse passing off (as in Bristol Conservatories)?

Better, though, was the argument that the trade mark was invalid, that it didn't qualify as a series or even that such a series trade mark could not be registered under the terms of the directive. But that's another story which I don't have time to write at the moment. I was pleased to note from the first instance judgment that the extract from the Registry's manual shows as an example a trade mark for which I filed the original application - though it wasn't, and apparently still isn't, a series (the Registry might have adapted it to illustrate the point they wanted to make).

Steal This Riff: How To Fix Copyright Law And Set Musicians Free - MTV

I'm always rather unconvinced by "how to fix copyright" articles, but here is an interesting contribution to the debate about sampling, proposing a compulsory licensing solution. Paradoxically (I think) the new technologies that make this a problem also hold the key to collecting micro-payments in return for use of a copyright work, so rendering collective licensing potentially redundant. And why should any licensing scheme be compulsory? That might have been the best way to strike a balance between owners and users a few years ago, but the technology now puts rights owners in charge of the use of the own rights, and if they don't want to grant licences they shouldn't have to, provided of course that they don't simply discriminate on bad grounds. Usually, I imagine, they would be happy to have the money: that after all is what motivates most people to create copyright works.

'via Blog this'

Friday, 27 May 2016

Council adopts trade secrets directive

The EU Council has adopted the trade secrets directive. The Council's press release is here. The Directive comes into force 20 days after publication in the Official Journal and Member States have two years in which to implement it.

It follows hot on the heels of similar legislation in the US, prompting me to think about a short comparative study of the two - but not today.

Thursday, 28 April 2016

Instagram v Littergram

BBC News reports how Instagram has insisted that a UK anti-littering campaign called Littergram change its name. The UK site, and the associated app, encourages people to take photos of litter and report it to their local authority - taking advantage of the power of social media for a socially useful purpose. Unfortunately being all about photo-sharing, it trod on Instagram's toes too heavily for the comfort of Instagram's owner, Facebook, who seem to be emerging as one of the biggest bullies in cyberspace.

Why on earth should there be the slightest problem between Instagram and Littergram? What possible likelihood of confusion is there? It's a prime example of a big trade mark owner seeking to turn the limited rights granted by trade mark law into something more like copyright - or even a patent-style monopoly. Essentially their argument boils down to the proposition that they own exclusive rights in the suffix "-gram", because there's certainly no similarity between "Insta-" and "Litter-" except the number of syllables and the sound of the second one of them.

Thursday, 14 April 2016

Press release: Metis Partners unveils the top performers in the UK's only IP League Table

As they've kindly sent me the press release, I will pass it on:
Metis Partners is proud to present the latest update in the IP League Table. Over 30 new entrants have been added in the last four months, many of whom made it to the top 20, suggesting that some of the larger, more sophisticated and IP-rich companies now see the benefits of entering the IP League Table. The results also show that the recognition of IP on the balance sheet is one of the features linked to some of the best scoring companies, suggesting that acquired IP assets, as a result of M&A, has encouraged companies to take IP management more seriously.
Kromek Group, a County Durham based radiation detection solution provider has topped the 2016 Intellectual Property League Table (IP100). The company has over 247 patents covering medical, nuclear, and security industries. Kromek has developed an end-to-end process for the fabrication and use of cadmium zinc telluride (CZT) crystals to detect traces of radiation.
Just after Kromek was Aberdeen based COREX, a provider of specialist services primarily in the analysis of geological samples for the oil and gas industry. COREX has over 35 years’ experience in this field.
In third place is Cambridge based B2B software specialists, Metail, who design 3D modelling software for the fashion industry, allowing online retailers to provide customers with a 94-96% accurate model of their bodies to facilitate online clothes shopping.
The IP League Table, sponsored by Clydesdale and Yorkshire Banks, Murgitroyd and Jumpstart, and in association with BE Group and Metis Partners, is based upon the assessment of five IP asset classes – Brand & Reputation, Patents, Critical Databases, Software, and Trade Secrets.
The IP League Table profiles and ranks innovative companies within the UK’s private sector, highlighting those which have significantly invested in their IP in the form of IP creation, IP management policies, R&D activities and IP commercialisation. Top performing entrants are published in the IP100, an annual ranking of companies that are considered to be the most effective at commercialising their IP assets.
Stephen Robertson, director and founder of Metis Partners, the award-winning IP advisory firm, said: "IP is a vital measure of the strength and viability of a business. The IP100 is providing a barometer of the importance businesses place on IP, and can be used by lenders and investors to judge the robustness and scalability of companies they might invest in.
"Clydesdale and Yorkshire Banks, headline sponsors of the IP League Table, have long recognised the value of IP, and lend to businesses with strong IP assets. We are excited to be able to highlight the advantages that effective IP management can bring to a successful fundraising or exit.
“This was clearly put to good effect by Touch Bionics, an IP-rich Scottish business funded by Clydesdale Bank which was sold for £27.5m earlier this week. This builds on the recent exit of and fundraising of IP100 entrants SwiftKey, eeGeo and Sphere Fluidics.
“The companies taking part in the IP100 will now be able to identify areas for improvement in their IP management and to focus on maximising returns from their IP, thanks to the increase in granularity of detail in the report.
“By shining the spotlight on IP-rich SMEs, the IP League Table is providing companies with a much-needed platform to promote IP recognition, IP management and benchmarks them as IP-savvy. It has become a hotbed of innovation and has created a community where IP-rich companies can share their experiences and successes in breaking into international markets, fundraising, gaining a valuation for their IP and even securing an exit at generous multiples!”
As well as exposure and recognition, entrants of the IP League Table receive membership to the IP100 Club, an exclusive network of IP-savvy companies who lead the way in promoting a culture of innovation and IP creation within the UK. The IP100 Club consists of the top performing 100 companies of the IP League Table, IP100 Champions, sponsors and potential investors. It provides exclusive access to monthly events across the UK which provide information on how to better manage and exploit IP assets, and also give IP-rich companies a chance to network and learn from each other. These events will also give companies an opportunity to meet the Clydesdale and Yorkshire Banks, IP100 sponsors and even investors who are looking for new, innovative companies to invest in.

Wednesday, 6 April 2016


The Controller General of Patents, Designs and Trademark of India (CG) vide its notification dated 4th April 2016 has given an opportunity to all Applicants and authorised Agents of Trademark Applications which were recently abandoned by the Indian Trademark (TM) Registry to (re)submit their responses or make submissions (where response was not submitted earlier) by 30th April 2016.

This action will benefit the several thousand pending Trademark applicants whose applications were abandoned by the Indian Trademarks Registry due to lack of responses.

For the last several years, the Indian TM Registry had stopped sending Office Actions through the postal service. Instead, they uploaded them online on the TM Registry website. However, there were always delays and other issues in the process. It appears that due to discrepancies and mismanagement, several files and documents were misplaced and the TM Registry could not locate the filed responses which apparently caused a chaos at the Registry. However, instead of attempting to trace the missing documents, the Registry took the decision to simply abandon all applications where the Office Actions were issued (on/off line) and the TM Registry could not trace the responses submitted.

After much ado, the TM Registry has granted a grace period of 3 weeks (until 30th April 2016) allowing all applicants who had filed their responses to re-send copies of their responses. The same grace period also applies to those who did not submit responses because they did not receive the Office Action even though it was uploaded / sent through post. All applications that do not receive responses by 30th April 2016 shall be treated as abandoned.

On the one hand, the move to abandon the applications has been criticised widely as a sign of the Registry not holding itself accountable. On the other, it is also seen as a smart move to clear off the overload that is sometimes caused by non-serious applications.

If you or any of your clients have filed any trademark application in India, you may wish to check the status with your concerned Attorney. If it has been “abandoned”, you still have time till 30th April 2016 to take remedial action and submit a response.

If you are a Fox Mandal client, be assured that we are checking the status of your applications and shall be reaching out to the TM Registry to take necessary actions. Also, if your application has been examined, you must send your instruction to file a response immediately so a suitable response can be drafted and filed on or before 30th April 2016.

PS: As per the latest news, as a result of several writ petitions being filed before different High Courts, on 5th April 2016, the Delhi High Court vide its Interim order has stayed the order of CG. We await the final order and shall keep you informed. 

Thursday, 11 February 2016

AP Racing Prevails in Brake Technology Patent Case

From a press release issued for AP:

In a landmark legal case, AP Racing has been awarded £570,660 in damages, costs and interest following a ruling that Alcon Components Limited infringed the company's patent protecting the innovative Radi-CAL™ concept for motorsport brake calipers.
As the highest ever level of damages awarded in the Intellectual Property Enterprise Court, the case centred around a range of brake calipers introduced and patented in 2007. This Radi-CAL™ design made a major innovative step forward in brake caliper technology within the motorsport industry, and was used by teams in Formula 3, NASCAR® and subsequently Formula 1®. However, rival Alcon Components introduced a similar design in 2009.
As one of the world's leaders in brake technology, AP Racing has a history of design and innovation that dates back to the 1960s, and the company believes the ruling underlines the value of investment in research and development. AP Racing will always look to protect its intellectual property against infringement by competitors, using the support of the courts if necessary.
Following an initial trial in 2012, and a subsequent hearing in the Court of Appeal in 2013, a ruling was made in January 2014 confirming that the patent was valid and infringed, allowing the UK based company to pursue financial compensation and stop Alcon manufacturing more of the calipers.
Commenting on the award AP Racing managing director, Charles Bolton, said: 'Innovation is vital for the development of new technology, and patent infringement is always an uncompetitive answer. The Court's decision sends a clear message to the industry that the courts will not tolerate intellectual property infringement. AP Racing will always act to protect its intellectual property rights around the world, in order to safeguard our research and development work going forward'. 
Offering less mass, improved rigidity and better cooling characteristics than conventional brake caliper designs, the Radi-CAL™ concept represented a major innovation in braking technology when it was introduced. The patented design was first developed by AP Racing in 2007, since then the company has produced over 80 different Radi-CAL™ caliper designs. AP Racing continues to refine the design, and the concept is protected by patents across Europe and in numerous other countries including the USA, China and Japan.

The History of Patent Annuities

Who'd have thought patent annuities could be so interesting? I was fascinated when my old friend and running companion James Olcott launched a blog telling a weekly story about his father, Bernard. Readers of this blog will of course have little or no interest in Bernard's many marriages, the family history, the Third Avenue El or many of the other matters with which James has regaled readers - well, actually, you will be interested in all those things, but as we are approaching this from the intellectual property side they should be put to one side ... and you should read about patent annuities. Having met Bernard, who died a few years ago, I have been reading avidly and waiting eagerly for the new week's instalment (which appears on Thursday evenings UK time).

James has been extremely informative about New York in the fifties and sixties, long before I visited the place, and he's made me realise how much has changed in the world during my lifetime. Anyone with an interest in the patents field will also learn (from some of the postings) how much has changed in the past 50 or 60 years. Bernard was a serious inventor, and it was his technical background that brought him (via evening classes) to the law, to patent practice, to computers and thence to automating the payment of patent annuities. Intellectual property aficionados will enjoy reading about his discussions with Marks & Clerk, which led not to collaboration but to the creation of CPA with which Olcott International remains in competition (or vice versa), and other reminiscences about the patent world of years ago. When I teach students, or train lawyers, about intellectual property, I constantly remind myself that newcomers to the subject are picking it up as it is: I feel a duty to ensure that they understand also what it used to be like, so they can understand how it came to be what it is now - and, I hope, to recognise not only those respects in which it is superior but also those respects in which it used to be better. James's work also serves to maintain that important perspective.

There's more to write about this subject - but it's for a different blog, I think ... let's try to keep this one for intellectual property.

Thursday, 7 January 2016

NIPC Inventors Club: Joy

My good friend Jane Lambert has written an excellent review of the film, Joy, about the trials and tribulations of an inventor trying to get her idea to market, on her NIPC Inventors Club blog. Go and read it, then go to see the movie!

What Could Have Entered the Public Domain on January 1, 2016?

What Could Have Entered the Public Domain on January 1, 2016?  asks the Electronic Frontier Foundation, in a piece designed to highlight the harmful effects of the extension of U.S. copyright protection from 56 years to life-plus-70 which happened as recently as 1978, the year in which I passed my Law Society Part II exams (well, most of them in the August of that year, after one attempt which was a complete failure in the February). That was when the 1976 Act came into operation, finally bringing the U.S. into the Berne Convention family.

My eye was caught by the reference to one of my favourite records,  Kind of Blue, recorded in 1959, so copyright would have expired this year if the old rules had still applied. Extending the copyright term is always contentious, and it seems to be accepted that it has to be back-dated so that existing works get the benefit of the longer protection, notwithstanding that the generally-accepted justification for copyright (that it encourages copyright owners to create more) is hardly served by increasing protection for things that have already been created, indicating that there was already sufficient incentive at the time; and in some cases the author, being dead, is in no position to respond to a new incentive anyway.

The EFF article doesn't make it absolutely clear whether it refers to copyright in the music or the phonogram. It seems to be more about the music, but copyright in the recording is also important, certainly in our copyright law - and, intriguingly, there's a very close relationship between the two, because Kind of Blue is a sustained piece of improvisation, so the sound recording in a sense is the musical work.

Here, the Copyright Act 1956 would have given the recording protection for 50 years from release, so it would have expired at the end of 2009. The music, notwithstanding its improvisatory nature, would have been protected for the life of the composer plus fifty years, a much longer term already than that provided for in U.S. copyright law. According to the sleeve notes, all the pieces on the album were written by Miles Davis, except two attributed to Miles (died 1991) and Bill Evans (died 1980), so even before the idiotic extension of copyright protection in the mid-90s copyright in the music would have run until 2041 and will now run for 20 years longer. The EFF's point, that if you wanted to use a Davis piece in a film you'd have been free to do it in the U.S. had it not been for the 1976 Act, never had legs in the U.K. (But if you want to use it that way, what's wrong in principle with paying for it?)

As for copyright in the phonogram, that would have expired 50 years after the end of the year of release - 2009. That's just a little too early to have been caught up in the ludicrous Cliff's Law extension of copyright in sound recordings, and clearly too late to give Miles any incentive to get his trumpet out again.

None of this, however, has stopped it from being available on YouTube.


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