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Showing posts from April, 2006

Trade Marks: Case C-145/05, Levi Strauss & Co. v Casucci SpA

The European Court of Justice has just held that in determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, a court must take into account the perception of the public at the time when the allegedly infringing sign began to be used rather than rather than the time the registered mark first began to be used.

This was a reference under art 234 of the Treaty of Rome from the Belgian Cour de Cassation in a trade mark infringement case originally launched by Levi Strauss & Co. against Casucci SpA in the Brussels Commercial Court. The battle was over stitching on the rear pocket of a pair of jeans. The claimant had registered what it called the "seagull" design resembling a lance-corporal stripe's in the British army in Benelux in respect of clothes within class 25 in 1980. Some years later, the defendant marketed jeans with a stitching device on the back pocket which looked rather more like one of the…

Copyright: Da Vinci Code Case - absolutely my last mention of this case unless there is an appeal

Yesterday, I mentioned the Hon Mr Justice Peter Smith's secret code (Copyright - The Da Vinci Code: ho ho! 27 Apr 2006). Well now we have the decryption - "Judge's own Da Vinci code cracked" (BBC 28 Apr 2006). His message in "Smithy code" reads "Smithy Code Jackie Fisher who are you Dreadnought." So desu.

I reported yesterday that his lordship remarked that he didn't see why a judgment should not be a matter of fun. Quite so, especially after detailed assessment. But another quotation occurs to me, this time from A P Herbert:
"People must not do things for fun. We are not here for fun. There is no reference to fun in any act of Parliament."On quite a different point I knew the judge when he was at the Manchester bar and even appeared against him once or twice. I don't recall anybody calling him "Smithy" then. Should I ever find myself in front of him I certainly shan't start now.

Patent Conventions: Latest List of Members

The EPO has just published in this month's Official Journal an up to date list of contracting parties to every conceivable patent treaty and convention. The treaties covered include:
Paris ConventionPatent Co-operation TreatyPatent Law TreatyBudapestVienna Convention on the Law of TreatiesWorld Trade OrganizationEuropean Patent Convention, Munich Act, London Agreement on art 65 et cetera.I noted two things. First, HMG is party to a relatively large number of treaties - more than the USA and many EC member states. Secondly, 16 states have now ratified Munich 2000 which means that the EPC will be amended from 31 Dec 2007 at the latest.

Copyright - The Da Vinci Code: ho ho!

According to the BBC website, the Honourable Mr Justice Peter Smith has brought a touch of levity to the Da Vinci Code case - as if that case needed it (see "Copyright: "Da Vinci Code Case" - No Surprises"). His lordship has apparently hidden his own secret code in his judgment:
"Seemingly random italicised letters were included in the 71-page judgement given by Mr Justice Peter Smith, which apparently spell out a message."The learned judge is quoted as saying:
"I can't discuss the judgement, but I don't see why a judgement should not be a matter of fun."
Quite so! A sense of humour is a very good thing in a judge (see "Dispute Resolution: Judicial Humour from across the Pond"). A pretty good repository of it (proving that the words "American humour" are not quite an oxymoron) is "The Green Bag". I may not agree with Mr Justice Scalia's politics but I do like his wit.

First Attempt and Animated Presentation

I have attempted my first animated online PowerPoint presentation. It consists of the slides and handout of a talk that I gave last week at Leeds Civic Hall on information security law. I have a full report of it in my other blog. I also intend to try some more podcasts over the May day bank holiday. Cave.

Happy World Intellectual Property Day

Today is world intellectual property day. According to WIPO press release 445 of 24 April 2006, member states decided to designate this day
"to raise awareness of the role of intellectual property in our daily lives, and to celebrate the contribution made by innovators and artists to the development of societies across the globe."
This date was chosen because it is the anniversary of the day on which the WIPO Convention came into force in 1970. WIPO and its member states have celebrated World Intellectual Property Day every year since its inception in 2001.

Because of pressure of work nipc, have not done much to mark this date this year. Last year, we presented a lunch time event to launch the NCC's copyright deposit service and the year before I won a Dyson in the Ideas21 raffle at its do at the Melton Mowbray in Holborn. We shall certainly do something next year. For those who want to know what is happening today around the world there is a list of events on the WIPO …

Trade Marks: Relative Grounds Consultation

I attended a presentation by David Morgan of the Patent Office at the Leeds Hilton yesterday as part of the consultation on relative grounds of refusal. Having attended the very popular roadshow on software implemented inventions last year (which would have affected only a small number of people and in the event came to nothing) I expected an even bigger turnout as this proposal almost certainly will come to something and will affect thousands of SME in the North of England.

I couldn't have been more wrong. There were 8 of us in the meeting room. That was, however, one more than they were able to muster for Birmingham on 20 April. The presentation did not add much to the materials on the Patent Office website. Mr Morgan outlined the present practice where the Patent Office does consider relative grounds and the OHIM practice which does not and set out the options. These are all on the consultation page of the Patent Office website. These are essentially variations on keeping the p…

Happy St George's Day

In caseanybody is interested, today is St George's Day and Shakespeare's birthday. St George is the patron saint of England so today is our national day. Our national flag is St George's cross, that is to say a simple red cross on a white background which became the centre piece of our union flag (see Julian Wiseman "How to draw the Union Jack — accurately").

Australians, New Zealanders, Hawaiians and many other states and territories around the world have incorporated into their own flags. Possibly the licence fees on all those reproductions would make a good little earner for HM Treasury - if, Gordon is reading, I am sure a lot of barristers at the London patent bar would be happy to consider getting them in for you on a CFA.

Anyway getting back to St George I was agreeably surprised to learn from the BBC yesterday that St George - who was part Turkish and part Palestinian - is highly regarded in the Muslim community. Apparently the day will be marked by a style…

Brands: Geographical Indications and Community Trade Marks Pages updated

As promised yesterday, I havejust updated my Community Trade Marks page to take account of the new Community Trade Mark Regulations 2006 which come into effect on 29 April 2006. I have also updated my Geographical Indications page to take account of two new Council regulations, Council Regulation No 510/2006 and Council Regulation 509/2006.

The new Council regulations replace regulations 2081/92 and 2082/92. Their purpose is to comply with a recent WTO panel decision and introduce specific rules aimed at simplifying relevant registration procedures. An important change is that applications and objections from third countries may now be made directly to the Commission and eliminates the need for reciprocal and equivalent protection.

New Community Trade Mark and Enforcement Regulations to come into Effect on 29 April 2006

Two new statutory instruments will require practitioners' attention from 29 April 2006:
(1) The Community Trade Mark Regulations 2006 (SI: 2006 No. 1027); and
(2) The Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006 No. 1028).

The first of these replace the Community Trade Mark Regulations 1996 (SI 1996/1908) and will require me to update my article on the Community trade mark pretty soon. The new regulations are a bit longer. The main changes so far as I can see are that they accommodate the EC's accession to the Madrid Protocol and the designation of the Manchester, Leeds and other chancery county courts as Community trade mark courts in reg 12 (2) ("ye gods" I hear many metropolitans - and not just metropolitans - sigh).

The enforcmement regulations are much more significant in that they implement the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property…

Euro Defences: Sportswear appeal allowed

In my post of 6 Oct 2005 "Euro Defences: Another one bites the Dust", I noted Mr Justice Warren's decision in Sportswear Company Spa and another v Ghattaura [2005] EWHC 2087 (Ch) (3 Oct 2005) in which the judge struck out a Euro defence. The defendants appealed that decision and I must now report that the Court of Appeal has allowed the appeal (see Sportswear SpA and another v Stonestyle Ltd [2006] EWCA Civ 380 (11 April 2006).

As I have already set out the issues in my earlier post, it is enough for me to summarize the reasoning of the Court of Appeal. Lord Justice Lloyd said at paragraph [71]:
"it seems to me that the judge was wrong to conclude that the defence was bound to fail, on the basis that there was no arguable case of an adequate nexus between the anti-competitive agreement alleged, on the one hand, and the issue whether the Respondents have legitimate reasons to oppose further distribution."Lord Justices Longmore and Waller agreed. The tragedy of th…

What I have been doing over the Last Two Weeks

In case anyone has been wondering why I have not added anything to the blog since 8 April 2006 it is because I have been working on my chambers website. I have added a lot of new material and integrated it with the IP/IT Update, Huddersfield Intellectual Property and Huddersfield, Liverpool and Sheffield Inventors' sites. It is less a vanity site (if indeed it ever was) and more of a portal to a range of resources in intellectual property aimed primarily at SME and their professional advisors in Northern England and North Wales.

Two new sub-webs which took most of the time is the indexing and uploading of many of the slides and notes of the presentations and also many of the newsletters, guidance notes and other publications that these chambers have published since 1996. Presentations are indexed by date, speaker and topic and publications by date and type. It is amazing how much we have done over the last 9 years and we have left out most of the Y2K, EMU and Woolf stuff.

Since a se…

Copyright: "Da Vinci Code Case" - No Surprises

Having been called by a TV station from Seattle at the start of this trial because a local journalist believed that one of us was in it, we could hardly ignore Baigent and Another v The Random House Group Ltd[2006] EWHC 719 (Ch) (7 April 2006). Had the claimants succeeded the case would have been sensational. In the event, Mr Justice Peter Smith's judgment reached what was probably the right answer though he made somewhat heavy weather of it on the way.

The basic issue is summarized conveniently at para 140 of his judgment:
"the claim is for infringement of copyright in a literary work HBHG ["The Holy Blood and The Holy Grail"] by the writing of another literary work DVC ["The Da Vinci Code"]. The claim is about applying existing established principles of UK copyright law to the facts as they have emerged. The claim is of non-textual infringement in literary work. It is conceded that such a claim is unusual and because of its nature presents a greater diffic…

Patents: Miles Rees's Talk Uploaded

The excellent presentation that Miles Rees of the Patent Office to Sheffield Inventors' Club on Monday has now been uploaded to the Club's website together with a lot of other information including the names and contact details of 8 new service provider members.

Miles didn't get round to make the announcement trailed to him on Saturday. However, it looks as though his management were serious. He complained to me today that he had been asked questions about the Patents Court move to Wales by his senior management and the setting up of a special Intellectual Property Division or Chamber of the new UK Supreme Court on the lines of the proposed IP Chamber to the ECJ should the Community patent ever get off the ground (see "Proposal for a Council Decision conferring jurisdiction on the Court of Justice in disputes relating to the Community patent"). Perhaps we have stumbled on something that is really going to happen.

Remember you read it here first.

Patents: Re Macrossan's Application - Guest Contribution by Simon Hart

Simon Hart
B Com LLB (Uni of Qld)

The decision of Mr Justice Mann in the Macrossan case[2006] EWHC 705 (Ch) handed down on 3rd April 2006, appears to have significant implications for software patenting in the UK.

The case concerned the patentability of an automated method of producing the documents necessary to incorporate a company. The system has been deployed on the internet since May 2003 at www.ukcorporator.co.uk. A Patent Office Hearing Officer had rejected the patent application in March 2005, relying on all three of the commonly raised exclusions in the context of software patents, namely,
- the mental act exclusion,
- the computer program exclusion and
- the business method exclusion.
Mr Macrossan sought to counter all three exclusions and also raised an allegation of ‘apprehended bias’ against the Patent Office Hearing Officer. The bias allegation was based upon an alleged secret submission made to the Hearing Officer by the Patent Office examiner and was also based upon a P…

Search Orders: Rothwell joins Supervising Solicitors Panel

Charles Rothwell of Ramsdens has joined the nipcSupervising Solicitor Panel. He had previously been on the Panel when he was at Keeble Hawson and we have worked very well together both as client and counsel and counsel and supervising solicitor on several occasions. It is good to see him back. Charles has also agreed to support Huddersfield Intellectual Property Forumand the Huddersfield Inventors Club and his firm is now listed on that website.

Ramsdens is a very long established local firm. Indeed, Charles tells me that one of its forebears is the Ramsden in the famous case of Ramsden v Dyson (1866) LR 1 HL 129.

Charles has re-joined the panel at an opportunity time for, as we say in one of our latest guidance notes "Search Orders are Back in Style",

Freedom of Information Act 2000: Tracey and Hasan's Presentations

About a year ago there was much discussion on IPR Talk about the Freedom of Information Act 2000. Several contributors feared that public funding bodies and even the Patent Office might make patent applications and related documents available to persons seeking information under the Act. When Assistant Information Commissioner Gerrard Tracey and Ibrahim Hasan gave their presentations to the IP Centre of Excellence for the North on "Lessons learned from the First Year of the FOI" and "Freedom of Information 15 Months on" in Manchester on 30 March 2006 I put that question to the speakers. Both believed that such information fell within the commercial interests exception under s.43 (1) and that other exemptions might apply such as future publication under s.22.

This is not the only aspect of the Freedom of Information Act 2000 that concerns IP lawyers. There is a broad interface with data protection and confidentiality which affects computer contracts and electronic co…

Sheffield Inventors Club: Miles Rees to Speak

Today at 6 pm at Sheffield Central Library, Miles Rees, Business Development Manager, Awareness, Information & Media at The Patent Office will cast his pearls of wisdom. One announcement of his has already been trailed in Saturday's edition of this blog. Come along to listen to what else the great man has to say. Be there!

Copyright: Incidental Inclusion" Exception Case Note Updated and Transposed

To ease myself into the idea of earning my living again after a super weekend in Edinburgh, I have updated and transposed a case cote on Football Association Premier League Ltd and others v Panini UK Ltd[2003] EWCA Civ 995 which I wrote when the case was first reported.

The significance of the case is that it considers the meaning of the words "incidental inclusion" in s.31 (1) of the Copyright Designs and Patents Act 1988. The section provides:
"Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film or broadcast."
It is of obvious importance to podcasters, webmasters, broadcasters, publishers and just about everybody else using electronic media. The issue in this case was whether a picture of famous footballers in their games kit which necessarily included their club crests or logos infringed the artistic copyright and indeed other IPR such as trade marks in those insignia. In the note, I suggested parallels betwee…

Scotland: First Site of Scottish Parliament

My wife and I visited Edinburgh this weekend. There were roadworks everywhere one of which closed the Royal Mile just outside St Giles' cathedral. As we approached the centre looking for our hotel, the resulting deviation combination drove us down the Mound and along the railway tracks to the Canongate. At the foot of the Canongate where we had expected to find the Scottish & Newcastle brewery we found a massive concrete structure with bamboo sticks everywhere. "Good Lord!" What on earth is THAT?" exclaimed my wife. "No idea!" said I "but my guess is that it is the new Scottish Parliament". We decided to investigate it in the morning and that is exactly what it turned out to be.

I have to say that I was very pleasantly surprised. For a start it is open to the public on Sundays. There is a cafe and gift shop selling such well known Caledonian delicacies as cabernet sauvigon (imported from Chile) and latte (brewed on the spot). There always were…

Copyright: Cross-Border Enforcement

I have updated and transposed some case notes on cross-border jurisdiction and remedies onto the IP/it Update site. Some of them appear to be reported only on my site. These include Pearce v Ove Arup Partnership [1999] EWCA Civ 625 (21 Jan 1999) which confirmed that the English courts had jurisdiction to hear claims for the infirngement of foreign copyrights, the Canadian case NFL Enterprises LP v Sotiros and Peter Restaurant Company Ltd FCT T-2328-95 (1997-02-10) FCA A-103-97 (1998-07-03) on liability for broadcasts and PG Mavros (Private) Ltd. and another v Ponter, an unreported decision of Lawrence Collins as he then was.





Other Bloggers' Funnies

I have spent the last five minutes looking through the other IP Blogs to find out whether any of my colleagues came up with anything like the legendary Panorama spaghetti harvest yesterday.

IPKat came up with the WIPO's announcement that it is to launch its first unmanned mission into space. According to the post "the programme, run in conjunction with NASA and the WTO, aims to educate extraterrestrials about the importance of strong intellectual property rights as part of an economically viable market economy."

April Balatro of Patent Baristas came up with something even better: "Google to acquire Patent Baristas for $1.3 billion".

Patents Court to move to Wales

In his wide ranging paper "Doing Law Differently" published yesterday, Lord Falconer, Secretary of State for Constitutional Affairs, wrote:
"In order to sustain our justice system a number of changes are necessary. We need to preserve the aspects of the system that work well and reform those areas that are poorly designed, ineffective or restrictive. Reforms are being taken forward, but in a way that is very different from what has gone before."

One of the reforms commended by the Lord Chancellor is purposeful co-operation between the courts and other public service agencies. In the criminal system he commends the North Liverpool Community Justice Centre which brings together a multi-jurisdictional courtroom that has the sentencing powers of Magistrates’, Youth and Crown Courts, with a range of ‘on-site’ services including victim support and services dealing with drug addiction, debt and housing.

On the civil side, the report continues, there is a similar opportunity…

E-Commerce: OFT v Lloyds TSB Bank Plc

The Court of Appeal's decision in the Office of Fair Trading v Lloyds TSB Bank Plc and others [2006] EWCA Civ 268 is likely to have far reaching consequences for the development of e-commerce in the UK and beyond. This was an appeal from the judgment of Mrs Justice Gloster ([2004] EWHC 2600 (Com)) that s.75(1) of the Consumer Credit Act 1974 does not apply to foreign contracts, where the contract between the debtor and the supplier of goods or services was made wholly outside the UK, the contract was governed by a foreign law; and the goods delivered, or the services were supplied, outside the UK. Reversing Mrs Justice Gloster, the Court of Appeal held that the section applies to all transactions using credit cards regulated by the Consumer Credit Act 1974, whether they take place within the UK or elsewhere.

The significance of this judgment is that s.75 (1) of the Consumer Credit Act 1974 provides that if "the debtor under a debtor-creditor-supplier agreement falling within s…