30 October 2005
The mark in question was the word MOBILIX. Orange A/S ought to register that mark in classes 9, 16, 35, 37, 38 and 42 for a large variety of goods and services ranging from telecommunications apparatus and calling cards to answering services and installation services. The opponents, publishers of the well-known "Asterix" books, opposed the application on the grounds of earlier mark under art 8 (1) (b) of the CTM Regulation and earlier mark with a reputation in the Community under art 8 (5). The registration on which they relied was OBILIX which they had registered for a variety of goods in classes 9, 16, 28, 35, 41 and 42.
The Procedure in OHIM
The Opposition Division rejected the opposition on both grounds. On appeal, the Board rejected the application under art 8 (5) but found that there was some degree of similarity between the signs in question and between some goods and services and that there was a likelihood of confusion in the minds of the relevant public in respect of those specified goods and services. It therefore refused the application in respect of signalling and teaching apparatus and instruments and services known as business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties. However, it granted the application in respect of the remaining goods and services.
The Application for Annulment
Before the Court, the opponents attacked not only the Board's total rejection of its art 8 (5) objection but also its partial acceptance of the art 8 (1) (b) ground. It also tried to raise a new ground, namely that OBELIX was a well known mark within the meaning of art 6bis of the Paris Convention. To bolster its case on art 8 (5) it sought to lodge 5 new documents into evidence which were alleged to show that OBILIX was a well-known mark. As these had not been produced to the Board of Appeal, the Court would not admit that evidence. Nor would it allow the opponents to raise a new ground. The application proceeded on a straightforward comparison of marks and goods under art 8 (1) (b).
The CFI rejected the application. Relying on Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)  ECR II-2821, paragraphs 31 to 33, and the case-law cited), it considered the likelihood of confusion "by reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated". While the goods for which the earlier mark was registered were in the same classes as some of those for which registration was sought, there was very little overlap. Accordingly the Court could find no basis upon which to attack the finding of the Board.
Since Orange A/S, the applicant for registration was a Danish company, it is fitting that the latest Asterix exploit should be Asterix against the Vikings. No doubt the result of that contest with be more favourable for the Gauls. This decision of the CFI was a very thorough judgment which will be hard to fault.
29 October 2005
Relying on the European Court’s judgment in C-273/00 Sieckmann v OHIM ECR 1-11737 where it held that
“a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”
Eden argued that it had met that requirement by filing a verbal description of the smell together with a colour picture of a strawberry.
The CFI was unimpressed. Neither the picture nor the description was sufficiently precise if only because fragrances vary from one variety of strawberry to another. Indeed, the Court took the view that the photo added nothing to the description.
Since there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell it is hard to see how any smell can ever be registered.
28 October 2005
The WIPO announced today that the Banco Nacional de Algas (BNA), is designated as an international depositary authority within the meaning of article 6 (2) of the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure.
Perhaps more interesting is the blurb on the home page which indicates the BNA’s role in the Spanish Global Biodiversity Information Facility, That is described as “the biodiversity equivalent of the Human Genome Project”. Its objective is to establish an interoperable network of biodiversity databases, aiming to be a basic tool for the scientific development of any country for better protection and use of global biodiversity
26 October 2005
Now the Board of Appeal's decision is a little hard to follow. Cloppenburg is the name of a town in Lower Saxony of about 28,000 inhabitants and a local government district or Landkreis of some 150,000 souls. That makes it about the size of Ilkley and its website suggests that it is quite similar. Its attractions include a city park and folk museum. According to the CFI, the Board took the view that the word designated the town and Landkreis, that towns and districts of the size of Cloppenburg were regularly referred to in national met reports and forecasts, its name appeared on motorway signs and traffic reports, the sign designated the place where the provider of services was based and, therefore, the place where the retail trade services had been planned and from where they were supplied. It deduced therefrom that German end users would perceive the word "Cloppenburg" as an indication of geographical origin.
In its "Defence" to the annulment application, OHIM pleaded that it intended to support the claim for annulment. It contended that that approach would be tantamount to accepting the applicant's request and would therefore relieve the Court of the need to give a ruling. It asked the Court to rule on the action, having regard to the arguments of fact and law and declined to suggest any particular form of order. In the light of that pleading the Judge-Rapporteur ordered an oral hearing. In those proceedings, OHIM resiled form its pleaded position in that it it did not seek formerly the annulment of the contested decision but left the matter to the Court's discretion.
Although it was common ground that the Board's decision was wrong, the Court believed it was still bound to consider the merits in order to set aside the Court's decision. Moreover a judgment of the Court was necessary because OHIM did not have power to override the Boards of Appeal. The Court held that while most people in Germany may have heard of the town of Cloppenberg they did not associate it with any particular goods or services. Thus, the geographical origin exception in art 7 (1) (c) of the CTM Regulation simply did not apply.
Despite the fact that OHIM has not opposed the application it (that is to say we) had to pay the costs of the proceedings. The independence of Boards of Appeal is all very well but the Council should think seriously of introducing an amendment to the Regulation to allow the Office to reopen an examination in cases such as this.
In the first year of the EC's accession to the Madrid Protocol, it has been designated in more than 6,500 applications received by WIPO in Geneva. On the basis of the designations received at OHIM, the top 10 offices of origin are:
followed by Australia, UK, Italy, Japan and Austria in that order.
In that same period, OHIM received more than 1,800 international applications from CTM owners in Germany, the UK, Spain, France, Italy, the Netherlands, Sweden, Austria, Finland and Ireland.
There is also quite a good article on Community designs, "What is your design protected against?"
The article complains that the Information Commissioner has never chased the spammers and the reason given for that reported by Ken Young is that many of the offenders appear to be based overseas. It is perhaps worth mentioning that there is a right of action under reg. 30 (1):
"A person who suffers damage by reason of any contravention of any of the requirements of these Regulations by any other person shall be entitled to bring proceedings for compensation from that other person for that damage."
The main terms of the proposed settlement are that:
(1) Verisign shall announce its support for ICANN as the appropriate technical coordination body for the domain name system, in particular with respect to Internet domain names, IP address numbers, root server system management functions, and protocol parameter and port numbers.
(2) Verisign will not participate in, contribute moneys for, encourage or provide other support for any activities by or for third parties that seek to undermine ICANN's role as set out above;
(3) Any future disputes shall be resolved through negotiation, mediation and in the last resort arbitration;
(4) Existing proceedings will be stayed "with prejudice" (that is to say, they can't be reopened);
(5) Each party will pay its own costs.
Altogether, these are the sort of things I would expect to see in any sensible compromise.
If Microsoft does what it says it will do, I may even consider upgrading my operating system and Office applications when the new versions come out.
"What is the Patent Cooperation Treaty (PCT)?" to more substantial information on filing costs, priority, searches and sources of information.
This is so good that I am putting a link to this article from our public access blog nipc Invention.
25 October 2005
The appeal court referred several questions to the ECJ which the Court re-formulated as follows:
(1) Can a trade mark proprietor may prevent the introduction into the EC, under the external transit procedure or the customs warehousing procedure, of original goods bearing his registered mark?
(2) Can the trade mark proprietor may prohibit the offering for sale or the sale of original products placed under the external transit procedure or the customs warehousing procedure? and
(3) Where does the onus of proof lie?
The ECJ answered those questions as follows:
(1) Art 5 (1) and (3)(c) of the Trade Marks Directive must be interpreted as meaning that a trade mark proprietor cannot oppose the mere entry into the EC, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the EC previously by that proprietor or with his consent. Nor can the proprietor make the placing of the goods at issue under the external transit procedure or the customs warehousing procedure conditional on the existence, at the time of the introduction of those goods into the EC, of a final destination already specified in a third country, possibly pursuant to a sale agreement.
(2) "Offering" and "putting on the market" goods, within the meaning of art 5 (3) (b) of the and art 9(2) (b) of the CTM Regulation No 40/94, may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done, and/or the sale is effected, while the goods are placed under the external transit procedure or the customs warehousing procedure. The proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the EC.
(3) In a situation such as the one at issue in the main proceedings, it is for the trade mark proprietor to prove the facts which would give grounds for exercising the right of prohibition provided for in art 5(3) (b) and (c) of the Directive and article 9 (2) (b) and (c) of the Regulation by proving either release for free circulation of the non-Community goods bearing his mark or an offering or sale of the goods which necessarily entails their being put on the market in the EC.
24 October 2005
If I understand the statute correctly, it requires what we would call data controllers to notify promptly data subjects within the state of any unauthorized access to their personal data. There is also a duty to delete personal data when no longer needed. The legislation is due to come into effect on 1 March 2006 and Montana is one of several states in the West with such legislation.
One of the reasons why we have the "Safe Harbor" arrangements with all the complex contractual provisions that those arrangements involve is that the US has not provided much statutory protection for personal data. It appears that the position is now beginning to change.
23 October 2005
S.37 (1) provides machinery for determining who is entitled to a patent after it has been granted. It is generally regarded as the equivalent to s.8 which provides machinery for determining who is entitled to a patent application. However, one difference between s.37 and s.8 is that s.37 allows the question of whether any right in or under a patent should be transferred or granted to a third party to be determined by the comptroller. This case is about an attempt by one co-owner of a patent to use s.37 (1) to circumvent the rule in s.36 (3) that where two or more persons own a patent all of them must consent to a licence under the patent.
The application had been brought because the joint owners of a patent had fallen out. The invention had not been a success. One of the owners thought he might make it a success by licensing the manufacture of the invention to an Italian company, but the other wouldn't agree. Hence the application under s.37 (1) (c). The application was resisted on the grounds that:
(1) the comptroller did not have jurisdiction to make an order with extra-territorial effect;
(2) any discretion to grant licences under s.37 (1) (c) had to be consistent with s.36 (3); and
(3) as the parties had formed a company to work the invention, the proposed application would be a breach of fiduciary duty.
When the application came on before the hearing officer (Paxman v Hughes (23 May 2005)), he agreed with the respondent and struck it out.
The applicant appealed and Mr Justice Kitchin allowed the appeal remitting the case back to the hearing officer for directions for the further conduct of the case (see Paxman v Hughes  EWHC 2240 (Pat) (21 Oct 2005). Grossly simplifying the judge's reasoning he was not persuaded that the proposed licence would inevitably amount to a breach of duty or that it was necessarily beyond the comptroller's jurisdiction to make the desired order.
It seems to me that an awful lot of brass has been spent on an invention from which neither party has made, or seems likely to make, any substantial return.
Mark A. Shiffrin, a lawyer and a former Connecticut state consumer protection commissioner, and Avi Silberschatz, a professor of computer science at Yale, express the contrary view in "Web of the Free", one of today's Op-Ed contributions to the New York Times. Those authors attack the Commissioner's position as "disingenuous" describing it as a "'maneuver' [presumably, manoeuvre] amount[ing] to a call for the United States to depend on the kindness of strangers in maintaining basic infrastructure that underpins our national security and economy." "Moreover" they complained, "it threatens to whittle away the freedom of the Internet with a series of seemingly minor and well-intentioned compromises that begin with something that sounds as reasonable as a 'model of cooperation'."
A does of reality is required here. What we are talking about is not ownership or control of the internet, much less the traffic that is exchanged through its channels, but the allocation of domain name addresses. That has nothing to do with US national security, the US economy or the freedom of American internet subscribers to use the internet as they will.
The article appears to argue that the USA should control the domain name system because the web is a US invention. I don't really see the logic but in any case the assertion is only partially true. While much of the early work was done by DARPA and several Southern California universities (including that of my own alma mater) nearly 40 years ago (see "Origins of the Internet" in the Internet Society History), it was the work of the British scientist Sir Tim Berners-Lee at CERN (European Organization for Nuclear Research) near Geneva that actually made the worldwide web attractive to business and the general public.
This is a resource for all humanity and not for one state, albeit a powerful one. It would be good if we could carry America with us but, if we can't, it is not beyond the wit or resources of the rest of humankind to devise an alternative domain name system.
22 October 2005
Skimming through his blog the following took my fancy:
Canadian and U.S. Patent Law Differences on 11 Oct 2005 (a good cross-reference - to my untrained English eyes Canadian patent law looks even more different than American law);
Wyrd Trade-mark Lawsuit on 4 Oct 2005 about a claim by a Winnipeg folk group against Warner Brothers, Radiohead and Pulp for C$40 million and an order to prevent the latest Harry Potter movie from being shown in Canada (the comments are interesting too); and
Patents curb Competition on 27 Sep 2005 about Eli Lilly & Co. and Apotex Inc on the interrelation between IP and competition.
There is of course much, much more. I commend this site unhesitatingly.
Returning to the Australian site, the blurb says that it is brought by IP Organisers and IP Menu and that it will provide details of the latest Patent Office, Federal Court and High Court cases and IP news from Australia. "If it is Australian and has anything to do with patents, [we] will find it here." Its RSS feed is http://www.patentaustralia.com/atom.xml. IP Organisers offer intellectual property support to patent agents, lawyers and others including research, investigation, management, commercialization, auditing and discovery. IP Organisers Pty Ltd is also the company that produces IP Menu, which Stephen rightly commended as an excellent source.
21 October 2005
According to the article Mr Fishenden described the government's current plans for a centralized database with lots of information on everyone as a mistake. He added that it could lead to massive identity fraud. Rather than centralizing, data should be dispersed. In Fishenden's words:
"Any ID system needs only to keep information that is appropriate to a particular search in one location. That way you reduce the impact of loss or theft by decentralising the data."The article claims that the ICT experts the Home Office have been consulting have not really been speaking their minds and that his views are echoed by the BCS.
I'll think twice before switching to Linux for the moment.
Identity Cards Again 12 Sep 2005
Identity Cards: Conference Leeds 29 Sep 2005
At first, those rights were quite limited as can be seen by comparing the original version Part II of the Act with what we have now. Most of the changes came about through with The Copyright and Related Rights Regulations 1996 and The Copyright and Related Rights Regulations 2003 which implemented various EC directives. Now Part II is to change yet again with the the provision of new moral rights for performers.
These new moral rights are necessary to comply with the WIPO Performers and Phonograms Treaty. Art 5 (1) of that Treaty confers two moral rights:
"Independently of a performer’s economic rights, and even after the transfer of those rights, the performer shall, as regards his live aural performances or performances fixed in phonograms, have the right to claim to be identified as the performer of his performances, except where omission is dictated by the manner of the use of the performance, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation."The draft Performances (Moral Rights, etc.) Regulations 2005 would import those rights into English law. They will do that my amending Part II of the Copyright Designs and Patents Act 1988 and inserting several new sections into that statute.
The right to be identified as performer will arise whenever a person produces or puts on a qualifying performance that is given in public, broadcasts live a qualifying performance, communicates to the public a sound recording of a qualifying performance, or issues to the public copies of such a recording. The right to be identified includes the right to be identified in a programme, announcement, record sleeve and so forth. Such right has to be asserted and there are exceptions to it.
It is much less clear what "derogatory treatment" is. The proposed new s.205F (1) describes it as
"distortion, mutilation or other modification that is prejudicial to the reputation of the performer."As with moral rights in copyright, infringement of these rights is a breach of statutory duty. The usual remedies for IP infringement, namely injunctions, accounts and inquiries, will similarly be available.
Emphasizing the impressive degree of consensus that already exists on most issues, she explained that the difference of opinion that is grabbing the headlines is the small but important question of who and how names and addresses are allocated on the internet. Traditionally, the US government has overseen these key functions and most agree that it has done a good job. However, it is no longer desirable for a single state to decide who should run every other country’s top level domain space rather than the governments of the countries. Nor is it desirable for a single state to decide whether and when a top level domain can be introduced as the furore over the .xxx domain highlights.
The commissioner spelt out the EU position which is between the US government's demand for things to stay the same and just about everybody else's demand for change. It proposes a new forum based on fundamental principles to compliment existing mechanisms and institutions. Those principles would include inclusiveness of interests, interoperability, openness and the end-to-end principle.
Viviane Reding's speech put me in mind of Goldman Sachs paper "Dreaming with BRICS: The path to 2050". The authors look forward to a future in which the USA may be only the second, third or possibly even fourth great power in the world as the BRICS countries (Brazil, Russia, India and China) assert themselves. There is a lot of rot spoken by Eurosceptics - particularly as some of my compatriots celebrate a naval victory 200 years ago over our nearest continental neighbour and one of our closest allies - about the UK being able to stand aside from Europe as the 4th largest economy in the world. The reality is that unless we can integrate politically and economically in the next 50 years all the countries of Europe will be impotent. Moreover, the "special relationship" with America won't be worth very much because the USA itself will be in relative decline.
Issues like governance of the domain name system are likely to become more and more common as we move from a uni-polar to a multi-polar world. The greatest challenge for humankind is devising mechanisms to manage them.
It has been feature of our (and no doubt every other country's patent law) since the Statute of Monopolies that a patent monopoly should be granted only for an invention that is new. S. 2 (1) of the Patents Act 1977 provides that an invention shall be taken to be new only if it does not form part of the state of the art. Now the interesting point of this case is that the "state of the art" can be either
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way"
"matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say—This case was about the second of those provisions, that is to say matter in an application for a patent that was published on or after the priority date.
(a) that matter was contained in the application for that other patent both as filed and
as published; and
(b) the priority date of that matter is earlier than that of the invention."
The parties discovered that the paroxetine salt, paroxetine methanesulfonate ("PMS"), has properties which make it more suitable for pharmaceutical use at approximately the same time. Synthon BV ("Synthon") applied for an international patent for a broad class of sulphonic acid salts including PMS on 10 June 1997 which was published on 17 Dec 1998. SmithKline Beecham Plc ("SKB") filed an application on 6 Oct 1998 that gave priority for a UK patent application filed on 23 April 1999 which was published on 10 May 2000. As it was by them clear that PMS was one of many paroxetine salts suitable for a particular method of treatment, SKB narrowed its claim to a particular form of crystalline PMS.
Synthon applied to revoke SKB's application on the ground of lack of novelty, but as the matter upon which it relied was not known until after 6 Oct 1998 it had to rely on matter contained in its own patent application. That, of course, was conditional upon its application disclosing the invention and upon an ordinary skilled man being able to perform the invention using only the disclosed matter and common general knowledge.
Unfortunately for Synthon, their specification did not actually disclose how to make the preparation in the required form because it used the wrong solvent. They argued, however, that the skilled man could easily find another and that he would end up making the patented invention. At trial, Mr Justice Jacob (as he then was) bought that argument.
The Court of Appeal reversed Mr Justice Jacob but the House of Lords (or at least Lord Hoffmann) did not appear to be quite sure why. As noted above, anticipation is conditional upon disclosure of the invention and the ability of the skilled addressee to perform it. Lord Hoffmann surmised that the Court of Appeal must have got the two concepts mixed up which is easily done as they are very close when considered together. He surmised that the Court of Appeal either did not consider that Synthon's invention had anticipated SKB's in which case it was wrong or that it did not think that a skilled man would be able to make the invention in which case it was straying from its appellate role.
Points to note in this case are paragraphs 19 to 33 of Lord Hoffmann's speech in which he discusses the two conditions that he called "disclosure" and "enablement" and paragraphs 57 to 64 of Lord Walker's on the background and policy to s.2 of the Patents Act 1977.
20 October 2005
"Rethinking innovation, development and intellectual property in the UN: WIPO and beyond". I have just finished reading it and very interesting it is too.
Musungu argues for a radical overhaul of the international institutions governing innovation, development, and intellectual property in order to achieve the Millennium Development Goals. Not the least controversial of his suggestions is the relegation of the WIPO from the lead UN agency for intellectual property to something more like its original role as the international bureau managing the implementation of the IP regime (that it so say the conventions) but leaving decisions on the shape and structure of the regime to other agencies.
He also calls for better coordination and coherence within and among developing countries. He argues that they are "currently the only ones investing in protection of the public interest in the area of innovation, development, and intellectual property" and adds that while those efforts are of immediate interest for these countries, they also constitute an important global service.
Musungu is a Kenya lawyer. At present he is in charge of the South Centre's project on IP. The South Centre is an inter-governmental organization chaired by former UN Secretary-General Boutros Boutros-Ghali. It has 49 members from Africa, Asia and South America. Intellectual property is one of several ongoing programmes of the Centre.
In Oakley Inc v Animal Ltd and others  EWCA Civ 1191 (20 Oct 2005) the Court of Appeal resolved one of the loose ends dangling from Peter Prescott QC's judgment at first instance earlier in the year (Oakley Inc v Animal Ltd and others  EWHC 210 (Ch) (17 Feb 2005)). The other will have to await the outcome of a preliminary reference to the ECJ under art 234 of the Treaty of Rome.
The issue that was decided today was that s.2 (2) of the European Communities Act 1972 does entitle a minister to exercise an option in a directive to retain existing legislation without primary legislation when implementing such directive. Peter Prescott QC had taken the view that the section gave the minister a very narrow discretion and if he (or in this case she) wanted to do anything more - particularly where a serious matter of policy was involved - he or she would have to get Parliament to pass a statute to grant specifically the necessary powers.
The issue that remains to be decided is whether the option to retain the old law lapsed on the day the directive should have been implemented rather than the day on which it actually was. The language of the directive certainly suggests that that may be so:
That is the issue before the ECJ.
"Any Member State may provide that, by way of derogation from paragraphs 1 to 7, the grounds for refusal of registration or for invalidation in force in that State prior to the date on which the provisions necessary to comply with this Directive enter into force shall apply to design applications which have been made prior to that date and to resulting registrations."
Anyone who lacks the time or patience to read the whole of Peter Prescott QC's erudite judgment can get what I call Animal lite from his summary of his reasoning in paragraph 4 of his judgment of 16 March 2005 (Oakley Inc v Animal Ltd. and others  EWHC 419 (Patents)).
At the start of his judgment, Lord Justice Jacob marvelled "that a pair of fashion sunglasses could lead to a case of such constitutional importance that the Government found it necessary to intervene by its chief law officer, the Attorney General". The case arose like this. If the old law continued to apply the claimant's registration was invalid because the design lacked novelty. It lacked novelty because the design was known shortly before the application. If the old law did not apply, the registration might be valid because things disclosed up to one year before the application are not taken into account.
- Porridge for Patent Infringement? No.2. on the FIPR's evidence to the Patent Office on the proposal for a second enforcement directive;
- Needled in Geneva on domain name disputes;
- Tokyo Project Mr Justice Kitchin's judgment in GMG Holdings v Tokyo Project an interesting passing off case where the claimant was relying on the style of decoration of its premises;
- Tender Loving Care Case note on Love & Care v Kiernan one of the new assigned judge's first decisions since his elevation which shows a lot of promise;
- Lipitor again more background to the Ranbaxy case;
- This and That introduction to IP research carried out by the Quaker UN Office and a paper on the resolution of patent litigation in the USA;
- The Hunchback of Notre Dame case note on Mrs Justice Crennan's decision in Christodoulou v Disney Enterprises Inc. a trade mark infringement claim against the Disney Corporation arising from the book title "Hunchback of Notre Dame" and some interesting posts from Australia and Law Reunion;
- Switzerland: Anti-Counterfeiting and Piracy Initiative - exactly what the title says;
- Leo Sternbach - appreciation of life of famous inventor;
- Scania Finance France case note on important Convention point;
- How to succeed as a lawyer some really good advice brought to us courtesy of Tod Mayover;
- Ranbaxy Case - a US Perspective an interesting comment from US patent lawyer Stephen Albainy-Jenei
- Competition Law: OFT finding on MasterCard Interchange Fee;
- Ranbaxy v Warner Lambert case note on Mr Justice Pumfrey's decision in the Lipitor case
Very sorry for the interruption.
19 October 2005
In "The Second IPR Enforcement Directive — A Threat to Competition and to Liberty", the response to the consultation of the Foundation for Information Policy Research, Professor Ross Anderson of Cambridge University Computer Laboratory attacked the proposals on the following grounds:
(1) criminalization of patent infringement will damage competition, resulting in higher prices for consumers;
(2) new business formation and economic growth in Europe will be hit, especially if patent infringement remains a civil matter in our competitors;
(3) it will interfere with free speech over the internet;
(4) it will weaken still further the UK software industry;
(5) it will reduce access to books for the disabled; and
(6) it will interfere with academic freedom by imposing further restrictions on librarians and teachers.
The professor concludes:
"The UK's interests are not at all well served by this directive, and I strongly urge you and your colleagues to use the opportunity of the UK Presidency to kick it into touch."Amen to that.
This directive is a gift to UKIP, Veritas and all the Tory Eurosceptics who yesterday voted out of their leadership race the only MP who might ever have won back my vote to their party. Imagine the headlines if an importer of generics anti-virus drugs were to be prosecuted for patent infringement at the height of a bird flu pandemic.
18 October 2005
A very nice man called Lawrence Nodine (a partner of Needle & Rosenberg PC - you see the very bad pun - of Atlanta, Georgia recently acclaimed as the top law firm for IP in the USA) was delivering a very erudite paper entitled "Trends in Domain Name Registration using Whois Details". Though it was scholarly it was almost the last paper of a very long day and I am afraid I allowed my attention to drift as I wanted to look up the actual text of the Policy for a question that I had intended to to ask. Suddenly thorough my reverie I caught the words "Southwest Airline" and "Is Mr Lambert here in the audience?" Rather foolishly I stuck up my hand and mumbled something like "Yes here". "Mr Lambert" said Lawrence, "can you tell us what happened in that case?"
I had decided Southwest Airlines Co. v. Lorna Kang at the end of last year or the beginning of this. It was quite an unremarkable case and the only reason it stuck in my memory was that it was one of the last bits of work that Piper Rudnick must have done before their merger with DLA. Lawrence had been talking about registrants' conduct and I did recall that Lorna Kang had been a respondent in a lot of cases and I had been aware of that but that was all I could say. Everyone was glaring at me and it was clear that that was not the answer that Lawrence was expecting. "Anyway" said Lawrence, "you were really anguished which is why you denied the complaint." "Nonsense" said I. "It was quite straightforward. I found in favour of the airline." The screen had a reference to "My Little Duckie". "I can't remember anything about "my little duckie," I blurted. Fortunately, Matthew Harris had a BlackBerry and he looked up the case to which Lawrence referred. An announcement from the floor attributed the decision to a "nameless American panellist" and I was exonerated from what appeared to have been an eccentric decision.
The unnamed American panellist was in fact none other than Professor Frederick Abbott, Edward Ball Eminent Scholar of Florida State University and the case that Lawrence had in mind was Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman. In that case, Professor Abbott denied the complaint for absence of bad faith. Having read the decision very briefly, I can see why. The airline relied on an addidavit from a private detective of a conversation in which the respondent mentioned a fee for the sale of the disputed domain name. That evidence did not impress Professor Abbott and I doubt that it would have impressed me.
As the panellist noted, the detective's initial offer to purchase the domain name was clearly rejected by respondent, with an indication that he had no intention to sell the name and that he was using it in connection with its business. The agent telephoned the respondent again and followed up with another e-mail request. On this occasion, the respondent reiterated that he had no intention of selling the disputed domain name. He added that he hoped to keep further inquiries away by stating that he would not accept an offer less than $25,000 wishing the investigator good luck in finding an alternative domain name.
The contention that this constituted evidence of registration “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” was clearly nonsense. As the panellist put it:
"With perhaps rare exception, every business asset is for sale at some price. Southwest Airlines is for sale at some price. The fact that Respondent on repeated inquiry could be induced to say, There is some price at which I would sell this domain name” shows nothing more than that Respondent is an ordinary businessperson. Taken in the context of the correspondence between Complainant’s agent and Respondent, the evidence shows that Respondent registered the disputed domain name to use in connection with its apparel business, and not for the purpose of selling it to complainant (or a third party). Complainant’s characterization of Respondent’s conduct omitted information highly material to this proceeding."I have to say that I find much force in Professor Abbott's reasoning.
By coincidence I had mentioned Professor Abbott's work in "This and That". He has done a lot of valuable work (some of it published by the QUNO) and he is obviously a scholar of tremendous intellect and integrity. I take the attribution as a compliment - albeit a backhanded one - from Lawrence.
Other Posts on Domain Name Disputes
Always Consider the UDRP First 31 Aug 2005
Back from the Smoke 13 Sep 2005
15 October 2005
The judgment seems to suggest that the indicia upon which the claim was based was the general look of a night club which had been designed by an artist who had left the claimant to join the defendant company. Perhaps not surprisingly, he had designed the defendant's club in similar style. The application to restrain the defendants had come on just before they were to start work on preparations for their launch. Any delay in those preparations was likely to put them to considerable inconvenience and expense.
The judge refused the application partly because he could see considerable difficulty in running the claim to trial. Though the case does not appear to have been mentioned My Kinda Town v Soll  RPC 407 sprang to my mind. But he also considered the relative risks of injustice in reaching his decision on the merits of the claim.
The dispute arose from proceedings in the Land Registry. Each party claimed to have agreed a lease with the former owner of a property just before he died. One of those parties protected his claim with a caution while the other applied to register its lease. The Chief Land Registrar felt unable to resolve this dispute and directed the party that had registered the caution to issue proceedings in the High Court or lose his caution in default. He failed to do so within the allotted time and the caution was vacated. The party against which the caution had been registered brought proceedings joining not only the party that had registered the caution but also the personal representatives of the owner.
As the judge observed, they could have played a very passive role but they chose to fight both of the other parties instead. As against the claimant they counterclaimed for a declaration that the agreement for a lease was of no effect and not binding on the estate. Because one of those parties was a company and its financial position was not good, the personal representatives sought security for costs under CPR 25.13 (1) and (2) (c).
The judge had no hesitation in finding that the claimant company would be unable to pay the personal representatives' costs. It thus became a question of discretion and it is in this that the judge showed the encouraging signs that I mentioned above. He refused the application for security on the ground that the application was tantamount to to an application for security against the defendant to the counterclaim. That was in effect the conclusion to be drawn from the order that the personal representatives sought. The draft minute actually provided for judgment on the counterclaim if the claimant could not provide the security sought. He noted that the claimant had sought no relief against the estate at all. The personal representatives had not need to wade into the action. If they incurred costs of £50,000 by doing so they only had themselves to blame. Moreover, since the proceedings against the other parties would survive as would the counterclaim there was very little scope for saving costs overall.
Situations like this happen very often. I myself have argued that security for costs against a claimant is tantamount of favouring the counterclaim on more than one occasion and I have to say before tribunals with far less perception that Mr Justice Kitchin. Sir High Laddie worked like that too which is why I was very sorry when he left. I am a lot happier than I was.
It is necessary to register to access NYT articles. Registration is free. It's as well to move quickly, however, because the NYT charges for archived material.
The reason I shall be in Geneva is to attend the annual WIPO domain name panellists meeting. The programme is very promising - talks by Christian Wichard and Ignacio de Castro on developments in ADR for IP, updates on the UDRP, a discussion of the new .eu TLD including a presentation by Tony Willoughby and much more.
While there I shall also pop into the Quaker United Nations Office. I mention this because they have published some work on intellectual property. One of the topics upon that they have discussed is Frederick Abbott's paper on Compulsory Licensing for Public Health Needs. This topic used to be regarded as a development issue but I think the rest of the world will take an interest in it in view of the announcement in yesterday's Patent Baristas of Cipla's proposal to make generic competitor to Tamiflu coinciding with commotion over infected birds in Eastern Europe.
While commending US blogs I have to mention a paper reported by Dennis Crouch on the Resolution of Patent Disputes in the USA. This country is probably too small a base but I should like to known the equivalent figures for here.
As I don't intend to lug a laptop onto an aeroplane and have not yet invested in a Blackberry this will be my last post for the weekend. Be back on Tuesday. Have a good weekend all.
14 October 2005
The judge held that it did not. The words "Hunchback of Notre Dame" referred to an established title. The descriptive meaning of those words had been established long before the registration of the trade mark. The purpose and nature of the use was to describe Disney products. It was not for the purpose of indicating a relevant connection in the course of trade.
Similar initiatives have of course been started in the UK, USA and internationally.
The article records how the drug companies competed to make a tranquilliser without any of the side effects of existing products in the 1950s. Wallace Pharmaceuticals led the way with a tranquiliser that was an improvement on what had been available before. Sternbach was asked to develop something with just enough differences to avoid infringing Wallace's patent. Instead of analysing Wallace's invention, Sternbach took a different approach. Starting with research that he had carried out as a student, Sternbach tested 40 benzodiapene compounds until he came across a preparation that worked. The new drug was called "Librium" and put on sale in 1960. It was followed by a simpler but stronger version that Sternbach also developed called "Valium". It was remarkably popular during the 1970s but concern grew as to whether it was habit forming.
He invented many other products including Mogadon and Klonopin. Sternbach received US$1 for each patent - the Economist reports 241 of them - in consideration of his patent rights. His only other reward was a prize of US$10,000 from his employer for each outstanding invention until he was asked to give others a chance. He went into the office until he was 95 to keep up with what was going on.
13 October 2005
I have had too many pupils over the last 12 years or so to take another, but if I did another pupil I think I would give the advice that appears on Tod's blog. Tod says: "I recognize that some of this advice might seem out of place in today’s world because society is much more competitive and financially driven than it was forty years ago. But wouldn’t it be nice to expect these same virtues from our fellow men today as our fathers did many years before!" I am not sure that I agree with him on that one. I think the pressures of today make the advice more apposite than ever.
According to the OFT, the agreement infringed art 81 (1) EEC and the Competition Act 1998 in that it gave rise to a collective agreement on the level of the multilateral interchange fee and resulted in the unjustified recovery of certain costs incurred by MasterCard's UK members and other MasterCard licensees through the multilateral interchange fee. Since the offending provisions had come to an end the OFT imposed no sanction on MasterCard and gave no further directions.
This decision was of some personal interest to me because I was the first legal adviser to VISA International for Europe, the Middle East and Africa between 1984 and 1985 and much of my time was spent in notifications and referrals of various provisions of that payment group's operating regulations to what was then called DGIV. I can't remember much about those transactions (and even if I could I wouldn't for reasons of employer-employee confidentiality) but I have noticed the Commission's Decision of 2 July 2002 on VISA's multilateral interchange fee. That notiication resulted in a conditional exemption for VISA International. If I have time, I will read through the two decisions and see if there are any lessons to be discerned and let you all know.
IP Case Law Update - Patents: Ranbaxy UK Ltd and another v Warner-Lambert Co.  EWHC 2142 (Patents) (12 Oct 2005)
There are at least three reasons for reading this case. The first is that Mr Justice Pumfrey refused to consider evidence relating to representations made to patent offices on the ground that it was irrelevant to construction. His decision stymies, at least for the time being, the development of anything like prosecution or file wrapper estoppel in England. Secondly, it applies the principles set out by the House of Lords in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others  UKHL 46 (21 October 2004) and subsequent cases. Finally, he considered whether there are any practical differences between the European Patent Office and the English courts in considering obviousness.
2. What this case was about
This was an application for a declaration of non-infringement in respect of one European patent under s.71 of the Patents Act 1977 and a claim for revocation of another. The inventions for which the patents were granted were for atorvastatin, a cholesterol synthesis inhibitor sold under the sign "Lipitor". So far as the application for the declaration of non-infringement was concerned the issue was one of construction. As the judge put it:
"Does the claim cover the single enantiomer which might be illustrated by formula (I) of the claim, or does it only cover racemic atorvastatin, that is the mixture of two enantiomers which Ranbaxy says is denoted by formula (I) on a proper interpretation of the formula in context."
The grounds upon which revocation was sought were obviousness and anticipation. The judge refused the declaration in respect of the first patent but he revoked the second patent for want of novelty and inventive step.
There are three main points to note. The first is that the judge distilled the following principle from Kirin Amgen and subsequent cases:
"I conclude that it is now clear that in deciding what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, the court must approach the problem from the standpoint that the language chosen will be usually of critical importance. An over-meticulous analysis is one that is too willing to draw from a detailed analysis of the grammar, the punctuation and the particular words and phrases used inferences as to meaning that the words might support but which the skilled person would not draw, and it is the antithesis of giving to the words chosen in their context the meaning that the skilled person would give them. Carefulness is not to be equated with over-meticulousness."
Though the judge stated the principle with admirable clarity, one gets the impression that he did not find it particularly easy to apply. The second point is that the judge considered whether there was any practical difference between the English and EPO approaches to obviousness. As it happened, he did not but then he did find the patent bad for anticipation as well as obviousness. The last point is that early news reports had indicated that this was a win for the patentee. In fact it was only a win on the declaration of non-infringement. In the belief that it had been a total victory for the patentee one commentator was moved to write that it was a good day for patent professionals in England because it showed that the courts were not necessarily anti-patent. In fact, the outcome has turned out to be rather different.
12 October 2005
On the IP side there will be presentations by Stephen Probert of the Patent Office and Tim Frain of Nokia on cross-border protection for IP between 10:00 and 11:15 on 20 Oct. Jonathan himself will be co-chairing the data protection session between 13:20 and 14:35 on 21 Oct. Speakers include the Dutch Information Commissioner and Sue Gold of The Walt Disney Co. The title of the session is "Data Protection and Global Uncertainty: Examining the Legal and Political Basis for Collaboration". No doubt much of this will be on "Safe Harbor". It will be interesting to see how that accommodation is working out in practice from the perspectives of a national regulator and the British subsidiary of a large US company. Also tempting is the antitrust offering between 10:50 and 12:05 the same day with speakers from Freshfields and the US Federal Trade Commission. There is a full social programme with a dinner in Lincoln's Inn Hall.
I am ashamed to say that Jonathan's email was the first I had heard of the conference, which is surprising given that there is substantial input from members of both branches of the English and Welsh legal profession. I checked the Bar Council's website to see what had been published and all I could find was a short notice referring barristers to Linda Castilla at the New York State Bar. There is an application form on the New York Bar's website which indicates that New York members can register for US$1,000 save those called after 2000 who are allowed in for US$500. If those rates apply to us, they seem very reasonable.
Sadly, I shall have to give this conference a miss this year as I will be at the WIPO domain name panellists annual get together in Geneva next week and it is difficult to justify two big conferences in the same week, but I hope that at least some of my readers will be tempted to attend the New York Bar conference.
11 October 2005
I was unable to find anything in English about the new law on the Japan Patent Office website but it may be that I was not looking in the right place. EPIDOS announces that the new law will be discussed at the "Far East meets West" conference in Vienna on 24 and 25 Nov 2005.
My other post on utility models is "More on Utility Models" on 5 Oct 2005.