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Tuesday, 29 July 2014

Actavis Group PTC EHF & Anor v Pharmacia LLC [2014] EWHC 2611 (Pat) (24 July 2014)


Russia: proposed changes to protection of descriptive trade marks

Бизнесу запретят патентовать изображения и категории товаров says Izvestia (Известия - the font it uses for the masthead, which looks unchanged from Soviet times, is beautiful), committing the journalist's inevitable sin when writing about intellectual property, because that third word is part of the word 'to patent' and this is clearly a trade mark story. It concerns a proposal to stop the registration of trade marks comprising descriptive words or images of products themselves - a crispbread manufacturer registered a picture of their product as a trade mark and allegedly used it to create a monopoly, and other similar instances are cited in the article, which Google Translate can help you understand. There is also a blog entry from World Trademark Review here which is in English.

At present this is just a proposal before the Federal Council, the upper house of the Federal Assembly of the Russian Federation (you might be surprised to find that the word for 'Council' is 'Soviet' - they should surely have found a synonym), but it is interesting to see another country grappling with overstrong trade mark protection. An interagency working group is being set up to consider the problem. Its conclusions might be something from which the European Union could learn.

Review of EU copyright rules - result of public consultations

The result of the public consultations on the Commission's review of EU copyright rules has been published here. More information about the consultation itself can be found here.

Survey evidence allowed in trade mark litigation

I had  it in the back of my mind that Enterprise and Europcar were related undertakings, the impression dating back to when a friend was a senior executive with Enterprise in Florida - and I realise that we are talking about when INTA met in Orlando, which was probably about 1997. So it would not be surprising if things were now different in the car rental world. Indeed, back then Enterprise were not themselves in the European market.

In Enterprise Holdings Inc v Europcar Group UK Ltd & Anor [2014] EWHC 2498 (Ch) (22 July 2014) the survey evidence related to the distinctiveness of the claimant's trade marks. In issue was the use of a stylised letter 'e'. Mr Justice Morgan considered the case-law (in particular, the Interflora cases) and judged that, despite criticisms raised of the survey in this case, it should be allowed. A useful review of the authorities, not a case that makes any new law.

US: Ford and General Motors Sued Over 'CD Ripping Cars'

TorrentFreak reports that copyright owners in the USA are suing Ford and GM on the basis that they are selling cars on which they should be paying a levy - because the cars contain equipment which can 'rip' recordings from CDs and store them internally. Under the Audio Home Recording Act 1992, originally introduced to deal with the problem of cassette recorders, manufacturers and importers have to pay a levy, and the car makers aren't. But the law contains (as you'd expect) exceptions to cover personal use and recording devices that form part of a larger piece of kit, which should be helpful to the car makers.

In the UK, the government has historically sets its face firmly against imposing such a levy, so it isn't a problem that car makers here are ever likely to face. Some continental European countries have levy systems, though. How they will deal with cars remains to be seen.

Friday, 18 July 2014

Embracing the open opportunity

In a speech yesterday, Commission Vice President Neelie Kroes  welcomed the development of 'open knowledge' and called for urgent reform of copyright law: here's the Press release. 

Her beef about copyright law concerns the effect it can have on teaching and the dissemination of knowledge: educational resources should, she thinks, be free to share. Which sounds fine in theory, but who's going create them without the protection of copyright to ensure that they stand a chance of earning a living from their work?

'It’s a crime', she said, 'when teachers are prevented from freely sharing open educational resources.' On the contrary: it is more likely to be a crime when teachers do share, if they infringe copyright. It's arguably a shame when that happens, but she's got a bit carried away there - and introduced an unfortunate metaphor.

She went on to insist that copyright needs changing: “Those rules were designed for a different age, more about limitationand control than creativity and freedom. Holding back ideas from open education to data mining: copyright needs urgent reform.” Well yes, it does, but wouldn't it be better to get copyright back in its box so that there is no danger that ideas receive protection? So generous and indiscriminate is copyright that it's far too easy for its owners to oppress people who do to their work acts that have not the slightest impact on their economic interests - and the best way to deal with that is to make copyright more discriminating, not to punch holes in the fabric of protection. Introduce a sensible test for originality!

FIFA object to design of Rosberg helmet

According to Die Welt,  FIFA has taken exception to Nico Rosberg's tribute to his country's football team's victory in the World Cup (it has always struck me as slightly odd that the son of the first Finnish world champion should be German, but stranger things have happened). FIFA, who should have learned from the Golden Ball  affair not to take such an absolute view of these matters, asserted that including a representation of the trophy on the helmet infringed its intellectual property rights. Really? Which ones? It doesn't look to me like a trade mark infringement - not the slightest impact on the ability of the trade mark (I assume there is one) to identify the source of anything - and anyway FIFA don't sell World Cups, do they? - and if anything the investment function and advertising function will surely be enhanced by such use. By a substantial majority, readers of MarkenBlog agree that this isn't infringing use.

And even if there is a potentially infringing act, it's only actually infringing if done without the owner's consent. Not to give that consent is remarkably churlish, and makes the owner look pretty stupid. But FIFA already looked pretty stupid after Golden Balls, so I suppose they had nothing to lose.

Tuesday, 24 June 2014

That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.


The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?


As to the first question, the Board concluded that the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American. As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.


Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTABs decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskins trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case. The court therefore granted Pro-Footballs renewed summary judgment motion to dismiss the case based on its laches defense.


After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioners were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment, the Board held that respondent has shown nothing more than a minimal delay in seeking cancellation and such a minimal delay was insufficient to support a defense of laches.


The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Boards decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Boards decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Boards decision so a final ruling on the fate of the six registrations is still many years away.


Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

Friday, 13 June 2014

Case C-117/13, Technische Universität Darmstadt

So the Sages of Kirchberg will still trouble an Advocate General in a copyright case. According to Advocate General Jääskinen's opinion in Case C-117/13, Technische Universität Darmstadt, is that a Member State may authorise libraries to digitise, without the consent of the rightholders, books they hold in their collection so as to make them available at electronic reading points.

Monday, 9 June 2014

Pre-exam nerves

This is the third year in which I've prepared students for the external London University LLB exam in intellectual property, and I realise to my surprise that it's the first year in which I have been aware of the date of the exam. I haven't just turned up for a couple of weekends and marked some essays and mock exams: I've had a couple of students apart from those at the Academy this year, which has made matters different, and have also had a lot more contact with at least a couple of the Muscovites than I had in the previous two years. Well, it's all over now: I can't teach them anything new, can't go through any more practice exam questions or record any more mini-lectures. They are on their own - and whether I have helped them get there or not, they are all well-prepared for tomorrow. I trust their pre-exam nerves aren't as bad as mine - it's difficult worrying about an exam when you're not the person sitting it ... Good luck to all of them, although I don't think they need it.

Shanks v Unilever (from Weekly Law Reports)

Here  is the ICLR's report of this important (because one of very few) case on employee inventions, and here is a short summary culled from the report which I believe falls within the permitted act of fair dealing for reporting current events:
‘The time value of money received by an employer following the
vesting of an invention by an employee was not a benefit derived by the
employer for the purposes of section 41(1) of the Patents Act 1977.’
WLR Daily, 23rd May 2014

Friday, 6 June 2014


In the course of writing the last post on here - in other words, I suppose, when I was reading the Moroccanoil case, I came across a mention of enTenTen12, a very large corpus of words which was used in the litigation to produce evidence about the use of the word Moroccanoil - and to prove that overwelmingly it was used to indicate the claimant's product. As this was a new and intriguing (the second time I have written the word 'intriguing' today - perhaps I am too easily intriged?) idea to me, I went looking on the Web. I didn't find as much as I had expected, but I did follow a lead to The Sketch Engine, a corpus query system. If I add a bookmark to my browser I probably won't be able to find it if ever I need it, and if I put it here it might assist others too. But I need to educate myself a bit more, because I don't know enough about it.

Moroccanoil v Miracleoil: no passing off

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014)  is a decision of Judge Hacon in what I still prefer to think of as the Patents County Court - although I need to get over that, as the change of name reflects also a change of substance. The somewhat oxymoronically-named claimant sued the supermarket for passing off when it introduced a hair oil (competing with the claimant's MOROCCANOIL hair oil) under the name ‘Miracle Oil’.
What's the problem? Surely the names are far enough apart? Well, it wasn't just the name: there was a word-only CTM, but claims relating to that were dropped early on for fairly obvious reasons. In the passing-off claim, the claimant alleged that the get-up and name of Aldi’s product were, in combination, too similar to those of their product. Just look at the photos in the annexes to the judgment! A substantial
number of consumers would mistake Miracle Oil for Moroccanoil, or assume that they shared a common manufacturer or that there was some other trade connection between them.

The evidence showed that the name ‘Moroccanoil’ was distinctive of the claimant's product in the UK: but the get-up without the name could never have become distinctive because it had never been before the public on its own. It was not a Jif Lemon type of case in which the public would not notice the brand name - although clearly it was an attempt to protect get-up rather than product name. The name was the important element, so that was where the goodwill in the business would be found, although the get-up also played a  part.

There was nothing to show that members of the public might assume that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacturer, or that they were otherwise commercially linked, for example by a licence. Even if any members of the public would be confused there would be too few of  them for the claimant's goodwill to be damaged.

The defendant had intended that Miracle Oil would bring Moroccanoil to mind. The judge considered it had succeeded. That it had done did not make it passing off. There might be problem with rights in the design, and the public might think the way the packaging of the one brought the other to mind to be cheeky, but that wasn't unlawful. There would be no relevant false assumption in the mind of the purchasers, not even initial interest confusion (which I thought didn't exist in European Union trade mark law anyway). Without evidence of a misrepresentation the claim failed, illustrating (if illustration were needed) of the impotence of passing off law to protect against supermarket own-brands. Perhaps copyright and designs law (especially if there had been a registered design) would have filled the gap, and a trade mark registration for the particular colour of the label would have been pretty conclusive, but on the facts of the case these items were not in the claimant's armoury. It shows how important it is, in this day and age, to ensure you collect the widest possible range of intellectual property rights - if the claimants here thought a word trade mark was going to do the job, they were sadly mistaken, and Aldi could easily what Americans might call an end run round the one distinctive mark the claimants did have.

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