29 June 2011

Edged Out: Future Publishing v The Edge Interactive and Others

The last few years have seen the emergence of the "non-practising entity" ("NPE"). An NPE treats intellectual property not as a shield to protect investment in research and development, design, marketing or other intellectual assets but as an investment in its own right. As often as not an NPE uses its IP to extract royalties, licence fees or damages from alleged infringers. NPE have been a largely American phenomenon but there have been examples on this side of the Atlantic such as Media CAT Ltd. which I covered extensively this year (see Media CAT v Adams and Others - The End on 28 April 2011). This case is about another.

The Parties
In Future Publishing Ltd v The Edge Interactive Media Inc and Others [2011] EWHC 1489 (Ch) (13 June 2011), the claimant ("Future") was a well-known publisher of computer gaming magazines with sales of approximately 3.6m magazines per month. Its publications include the magazine EDGE, which has been distributed in the United Kingdom since 1993. Its website is visited by over 400,000 visitors per month. Many jobs in the computer gaming industry are advertised in its pages. It has many corporate subscribers. It has won a number of awards over the years, including Games Magazine of the Year 2008. As the trial judge, Mr. Justice Proudman concluded, "it is plainly a substantial enterprise engendering a substantial following and substantial respect in the gaming industry."

The defendants were two companies registered in the United States, Edge Interactive Media Inc. ("EIM") and Edge Games Inc ("Games") and Dr. Langdell, an individual of British origin who now lives in Pasadena USA. The judge was satisfied that EIM and Games Inc were controlled exclusively by Dr Langdell. In the 1980s and early 1990s Dr Langdell had a business writing games software, under the name Softek and then Edge. Her ladyship noted that Dr, Langdell was "well-known" if not "notorious, for pursuing third parties using the name Edge for licence fees, failing which he pursues them for damages for trade mark infringement."

The Agreements
In Oct 1993 Dr. Langdell sued Future for passing off complaining of the publication of the magazine EDGE and also of Future's application to register that application as a trade mark. The action was compromised in 1996 by an agreement whereby
  • Future paid EIM £20,000 to EIM,
  • Future transferred its trade mark application and the goodwill in the EDGE sign to EIM,
  • EIM granted a royalty free licence to use the EDGE sign in relation to EDGE magazine, and
  • EIM agreed not to publish or license anyone else to publish a magazine substantially similar to EDGE magazine under the name EDGE or any colourably similar mark or claim any association or connection with EDGE magazine or with Future.
By a further agreement in 2004 Dr. Langdell and EIM assigned its trade mark in relation to goods in class 16 and its goodwill in relation to that mark in connection with those goods to Future for US$250,000 to EIM, and US$25,000 to Dr. Langdell. Mrs. Justice Proudman noted that both sums ended up in Dr. Langdell's bank account. The registration included:
"Printed matter and publications, namely magazines, newspapers, journals, columns and sections within such magazines, newspapers and journals, all in the field of business, entertainment and educations relating to computers, computer software, computer games, video games, hand-held games and other interactive media."
Both EIM and Dr. Langdell undertook not to "use or permit the use by any other person of any Trade marks in a way which is or could reasonably be confusing with Future's use of the same" in their respective agreements. For its part, Future agreed not to use the EDGE mark otherwise than for the publication and marketing of computer games magazines.

The Edge Masthead
As can be seen from the illustration to the right, the EDGE magazine and website have a very distinctive masthead. The letter "E" of the word "EDGE" has a cross bar protruding to the left with a corresponding shortening of the bar to the right. Each end of the cross bar is tapered to form what the judge described as "a sharp scalpel like point at the edge of the extension."

Both sides claimed to have created that sign. Dr. Langdell produced a 5 1/4 inch floppy disc from the early 1990s in support of his claim to have designed it in January 1991. Future's expert found that the file had been created by software running on Windows 95. In the absence of any satisfactory explanation from Dr. Langdell, the judge concluded that the disc had been concocted. Against Dr. Langdell's evidence, the judge had testimony from Future's creative director that he had created the masthead in the course of his employment without any reference to Dr. Landelle's work if indeed it had ever existed. The judge accepted the creative director's evidence. Despite a challenge from Dr. Langdell that it lacked originality over the Franklin Gothic typeface, her ladyship held that the masthead was an original artistic work in which copyright subsisted and that Future was the first owner of the copyright.

The Complaint
The judge observed that it was
"common ground that Dr Langdell and the defendant companies have used three versions of an EDGE logo, all based on a stretched version of the Franklin Gothic or Helvetica fonts. One of these versions is indistinguishable from the logo used by the claimant and was used on the defendants' letter heading in 2008 and 2009 and on EIM's website at various times. A second has a shorter bevelled trapezoid and was used on EIM's website from about 2003-4 until June 2009. A third has a much shorter trapezoid to the left of the vertical stanchion of the "E", amounting to no more than a triangle shape. I only have photocopies which Dr Langdell assures me accentuate the shadow produced by the bevelling. In all three cases, however, the slashed middle bar of the E was retained, as well as the stretching effect of the letters."
She had "no doubt that the defendants deliberately adopted a logo which is an obvious replica of the claimant's EDGE mark."

Causes of Action
Future sued Dr. Landell, EIM and Games for breach of contract, passing off and copyright infringement. It also applied for revocation of EIM's registrations under s.46 (1) (b) of the Trade Marks Act 1994 for non-use.

To use a gaming expression, Future hit the jackpot.

The judge held that the defendants' use of the EDGE logos breached the compromise agreement, constituted passing off and infringed Future's copyright. Furthermore, she held that the breaches were fundamental to the 1996 and 2004 compromise agreements and that those breaches had been accepted. Such acceptance freed Future from its obligation to use the EDGE mark only for games magazines.

Save for Future's use of the EDGE mark for the EDGE magazine and website, Dr. Langdell could point to no evidence of sales in the UK in the 5 years before the action. Mrs. Justice Proudman held that Future succeeded on that point also.

Rough justice for Dr. Langdell. Not only will he be clobbered for infringing Future's intellectual property but he has lost his own. Namely his TM registration dating form 1996 and the restrictions on Future's use of the EDGE mark in the 2004 agreement. But rather than feel sorry for him we should reflect that intellectual property is not a commodity but exists as an incentive to creativity, enterprise and inventiveness. Should anyone wish to discuss this case or intellectual property in general, he or she should call me on 0800 862 0055 or use my contact form.

24 June 2011

IP Policy: Does Hargreaves say Anything New?

We have had quite a few reviews of intellectual property law recently. They include the following though I could have listed a number of others:
Now we have “Digital Opportunity A Review of Intellectual Property and Growth” by Prof. Ian Hargreaves of The Cardiff School of Journalism, Media and Cultural Studies. Does this report say anything that has not already been said before? In my view it does. As readers will see from my comments on Innovation Nation and Gowers. I have been pretty underwhelmed by previous reviews.

What’s so special about Hargreaves?
What makes Hargreaves different from the rest is its approach to the topic. In his foreword, Prof Hargreaves compares his commission from the Prime Minister to an exam question:
“Could it be true that laws designed more than three centuries ago with the express purpose of creating economic incentives for innovation by protecting creators’ rights are today obstructing innovation and economic growth?”
He concludes that the answer is “yes”:
“We have found that the UK’s intellectual property framework, especially with regard to copyright, is falling behind what is needed. Copyright, once the exclusive concern of authors and their publishers, is today preventing medical researchers studying data and text in pursuit of new treatments. Copying has become basic to numerous industrial processes, as well as to a burgeoning service economy based upon the internet. The UK cannot afford to let a legal framework designed around artists impede vigorous participation in these emerging business sectors.”
In contrast to Gowers which made 54 recommendations, Hargreaves offers just 10. These are intended to achieve “more open, contestable and effective global markets in digital content and a setting in which enforcement of copyright becomes effective once more.” If followed, the report promises, “the result will be more innovation and more economic growth.”

This is far from a perfect report. In my view Hargreaves misses several tricks, particularly in relation to patents; but it is worth reading, which is more than can be said for at least one of the other reports. Also, some of its recommendations – particularly the digital copyright exchange - are worth implementing.

Evidence Based Policy
The key recommendation of this report is that policy should be based on evidence rather than lobbying:
“Government should ensure that development of the IP System is driven as far as possible by objective evidence. Policy should balance measurable economic objectives against social goals and potential benefits for rights holders against impacts on consumers and other interests. These concerns will be of particular importance in assessing future claims to extend rights or in determining desirable limits to rights.”
Applying that recommendation, Hargreaves challenges the assumption that lengthening the term or widening the scope of legal protection invariably incentivizes innovation. The review cites the European Commission’s evaluation of the Database Directive which showed that database creation had actually slowed in Europe despite legislation conferring a new database right whereas in the USA, where there is no such right, database creation had continued to expand.

However, Hargreaves does not always accept the evidence on offer. On patents, for example, the report acknowledges “substantial evidence on patents as mechanisms to incentivize and reward the exploitation of invention” but then in the same sentence it introduces a caveat. The review challenges the notion that patents should be treated as an innovation output measure relying on UK evidence that British firms rely on confidentiality agreements and secrecy rather than patents to protect their technology. The obvious reason for that is that the high cost of patent prosecution and the even higher cost of intellectual property enforcement in the UK deter many British businesses from seeking patent protection in the first place. In Germany, where enforcement litigation is much cheaper, SME are far more likely to apply for patents. Judging by the sustained success of the German economy since 1945 the Mittelstand’s fondness for patenting does not seem to have done Germany any harm at all.

International Context
Recognizing that our law has to comply with international conventions and EU directives, Hargreaves recommends:
“The UK should resolutely pursue its international interests in IP, particularly with respect to emerging economies such as China and India, based upon positions grounded in economic evidence.”
Worthy sentiments! The trouble is that such forums as diplomatic conferences, the European Council and the World Trade Organization are influenced less by economic evidence than by the need to reconcile conflicting national interests. As often as not a national interest equates to the interests of an industry such as viticulture in France - which explains why the French government campaigns for the protection of geographical indicators of origin - or Hollywood in the USA which explains why the US government demands tougher sanctions for copyright piracy. A good example of the triumph of national interest over economic evidence is the EU patent which Hargreaves supports which would benefit Spanish and Italian inventors and SME just as much as those anywhere else. Yet that initiative that has been blocked for the foreseeable future by the Spanish and Italian governments’ insistence on parity for their national languages with English, French and German.

Not surprisingly given Prof. Hargreaves’s background in journalism and Ofcom, the report’s most interesting proposals concern copyright. Observing that digital technology is transforming copyright for better and worse, the review concludes that the law as it stands satisfies no one:
“Infringement is widespread; understanding of the law is poor; millions of works cannot be digitised for conservation or accessed at all and content industry business models are under strain, prompting companies to look to Government for vigorous enforcement action against consumers and suppliers of “pirate” content.”
The solution that Hargreaves proposes is not ever more draconian laws but new business models that enable content providers to derive income from an already vast and rapidly expanding market for their works.

To promote the development of such new business models, Hargreaves proposes a “cross sectoral digital copyright exchange”. That appears to be “a network of interoperable databases to provide a common platform for licensing transactions” which would:
  • attach copyright conditions and rights information directly to digital content in a uniform machine readable fashion (so called meta data);
  • license across delivery technologies, to facilitate open competition between services based on different technologies;
  • adapt to emerging technologies;
  • meet the specific needs of different sectors while remaining governed by common standards and principles;
  • bring in licensing for other rights, such as design right; and
  • provide a low cost dispute resolution system.
Hargreaves is very clear that such an exchange should not be created or managed by the government:
“That way lies a nightmare of IT procurement followed by the birth of a white elephant.”
But it should certainly foster such a scheme:
“The task for Government is to use its convening power, to show leadership to achieve an outcome which others have not been able to manage. It will involve bringing together all relevant interests, and finding ways to overcome divergences of interest to secure the bigger prize in a way that takes account of the interests of all. More than a nudge, perhaps, but less than a full arm lock with menaces.”
A specific recommendation is appointing “a highly respected figure” to lead its formative stage before the end of 2012 under the auspices of the Intellectual Property Office or even Ofcom. Such an exchange could facilitate two of Hargreaves’s other recommendations, a framework for cross border copyright licensing and licensing of orphan works.

Interestingly, Hargreaves has very little to say about licensing schemes or the Copyright Tribunal under Chapters VII and VIII of Part I of the Copyright, Designs and Patents Act 1988. Copyright licensing is essentially a competition issue which needs to be harmonized with existing national and EU legislation. I have often argued that licensing can be regulated much more effectively by a competition authority such as the OFT (or possibly even Ofcom which Hargreaves sees as a candidate for overseeing the digital copyright exchange) than by a tribunal.

Hargreaves’s final recommendations for copyright are on the exceptions. The review stopped short of advocating the introduction of the US fair use doctrine into our law but urged the government to
  • “deliver copyright exceptions at national level to realize all the opportunities within the EU framework, including format shifting, parody, non-commercial research, and library archiving”,
  • promote at EU level an exception to support text and data analytics, to give a lead at EU level to develop a further copyright exception designed to build into the EU framework adaptability to new technologies, and
  • legislate to ensure that these and other copyright exceptions cannot be excluded by contract."
Hargreaves’s most surprising finding is that “the UK patent system is, on the whole, functioning reasonably well.” Because of that finding the review’s only recommendations were
  • work sharing with other patent offices,
  • ensuring that patents are not extended to computer programs and business methods and
  • “investigating ways of limiting adverse consequences of ‘patent thickets’”.
“Work sharing” by which I think Hargreaves means searching is already done under the Patent Co-operation Treaty. There is a compelling argument that the exclusion of computer software and business method inventions “as such” from the definition of patentable invention in the European Patent Convention and our Patents Act puts us in breach of our obligation under art 27 (1) of TRIPS to make patents available without discrimination “as to the field of technology”. But, more importantly, there is an even more compelling economic argument that those based on the state of the information technology nearly 40 years ago are putting British and European business at a competitive disadvantage to those in the USA, China and Japan whose patent laws contain no such exclusions.

That British industry has consistently trailed not just Germany and France which have similar populations and only slightly larger GDPs but also the Netherlands with a third of our population and even Switzerland with an eighth ought to have set off alarm bells (see the table “European Patent Applications Since 2002” that I compiled for “Why IP Yorkshire” in my IP Yorkshire blog). Graham Barker and Peter Bissell always used to begin their talks to inventors with the observation that most patents on the register are never worked, of those that are only a few ever cover their costs and of those few only a very small percentage ever make serious money for their inventors. In a speech to the Licensing Executives, the great patents judge Sir Robin Jacob remarked that most patents don’t matter. The expenditure by so many businesses and individuals on rights that are effectively worthless should be a national scandal. Hargreaves’ failure to address either of those issues is a serious flaw in this report.

Even though design was not explicitly mentioned in the review’s terms of reference and despite such startling errors as “design right dates from the 18th century” and the omission of artistic copyright from the so-called “patchwork of protection”, the review made a sensible recommendation with regard to design protection:
“In the next 12 months, the IPO should conduct an evidence based assessment of the relationship between design rights and innovation, with a view to establishing a firmer basis for evaluating policy at the UK and European level. The assessment should include exploration with design interests of whether access to the proposed Digital Copyright Exchange would help creators protect and market their designs and help users better achieve legally compliant access to designs.”
Actually the white paper Intellectual Property and Innovation (Cmnd 9712) made such an assessment in 1986. It was on that assessment that the government of the day introduced into our law protection of aspects of the shape or configuration of articles or parts of an article known as “design right” which no other industrial country has seen fit to imitate. As the evidence cited by Hargreaves implies, that legislation has not worked well for designers. A fresh look at design law is long overdue though the IPO may not be the best body to undertake such a task.

Hargreaves dealt separately with online copyright infringement and other IP disputes. Courageously, in view of the enormous pressure that would have been exerted by the film, recording and software lobbies the review concluded:
“we need a combination of enforcement, education and a big push to expand the legitimate market for digital content, through services which attract consumers of all ages and backgrounds. It will be important to ensure that enforcement measures are not designed or implemented in a way that alienates consumers and undermines work in education and extending the appeal of legitimate markets. Emphasising enforcement as an alternative to improved digital licensing and modernised copyright law is the wrong approach. Action is needed on all fronts.”
The report recommends “an integrated approach based upon enforcement, education and, crucially, measures to strengthen and grow legitimate markets in copyright and other IP protected fields.” Since the Digital Economy Act 2010 which was passed in the last Parliament’s wash up is now a reality, Hargreaves recommended that “its impact should be carefully monitored and compared with experience in other countries, in order to provide the insight needed to adjust enforcement mechanisms as market conditions evolve.” Ofcom was urged not to wait until the Act to establish its benchmarks and begin building data on trends. As for other disputes Hargreaves recommended a small claims track for the Patents County Court which is another sensible proposal.

SME and the IP Framework
The review recognized that SME want is an integrated source of advice which combines commercial and technical insight with legal expertise, helping them to commercialize, as well as protect, their IP. It also found that such advice is not always available from patent agents. That was just the sort of service that many – though, alas, by no means all - Business Link advisers used to provide. Hargreaves called upon the IPO to “draw up plans to improve accessibility of the IP system to smaller companies who will benefit from it”. The review added that “this should involve access to lower cost providers of integrated IP legal and commercial advice.” Again, these are worthy aspirations but there is a limit to what the IPO can do. The 13 PATlib libraries may be a better platform. Many such as Leeds, Sheffield and, of course, the British Library run IP clinics and inventors’ clubs. They also hold considerable collections of marketing and general business as well as legal materials which they make available to the general public. Unfortunately, our second city no longer offers the services of a specialist patent librarian (“Goodbye Chris and Thanks” Inventors Club 6 April 2011) and Liverpool Central Library is closed for refurbishment).

When I was a child there was a young woman with a strong West Midlands accent on a TV programme that reviewed new pop music record releases whose catch phrase was “Oil give it foyve”. That just about sums up my view of Hargreaves. Five out of ten is not a brilliant score but it is a lot better than the marks that I gave to Gowers and most of the other reports that I mentioned at the start of this article. Hargreaves makes some very sensible recommendations such as basing policy on evidence, supporting a European patent and, of course, a digital copyright exchange, but it has nothing else of value to say about patents and hardly even mentions other important intellectual property rights such as rights in performances and trade marks. As far as the European patent is concerned the best that an be achieved in the short term will be a common European patent for at least some of the member states. Also, there is no immediate likelihood that disputes over such a patent could be resolved by of a European patent court in view of the Court of Justice’s Opinion of 8 March 2011 on the compatibility of the draft European patent litigation agreement with EU Law. As for Hargreaves’s flagship proposal of a digital copyright exchange, the WIPO is probably a better forum for convening the interests that need to be involved rather than the IPO, Ofcom or any other national institution. Fortunately, WIPO’s initial reaction
to Hargreaves has been very encouraging.

10 June 2011

Injunctions: Araci v Fallon

The reason I am writing about Araci v Fallon [2011] EWCA Civ 668 (4 June 2011) is that it is very rare indeed for the Court of Appeal to interfere with the exercise of a judge's discretion when considering an interim injunction application. As Lord Justice Jackson accepted at paragraph [64] the Court of Appeal only interferes with the judge's exercise of discretion in relation to an interim injunction in one of the exceptional situations described by Lord Diplock in Hadmor Productions v Hamilton[1983] I AC 191 at 196. However, his lordship took the view that this case fell into this category and Lord Justice Elias Agreed with him.

The Facts
The well known jockey Kieren Fallon ("Mr. Fallon") had agreed in April to ride Native Khan which belongs to one Vefa Araci ("Mr. Araci") in last week's Derby. Clause 6 of his agreement provided:
"Jockey's Obligations
6.1 The Jockey and his agent(s) agrees that he shall:
(a) Not ride for any other horse where the Jockey has been retained to ride Native Khan under this retainer
(b) Ride the Retainers' Horses in races whenever possible to do so or as requested by the Retainers; and
(c) Wherever a conflict of interest or of a choice of horses to ride occurs for that include a Retainers' Horse, the Jockey shall always ride the Retainers' Horse, unless the Retainers otherwise agree; and
(d) Ride the Retainers' Horses in as diligent a way as possible, making all reasonable efforts to win; and
(e) Conduct himself and appraise the Retainers in an open and honest fashion relating to his subjective views about the training regime, fitness and potential of all the Retainers' Horses and recommendations for training and alternative jockeys when it is not possible for the Jockey to ride a Retainers' Horse in a race. In addition, the Jockey shall use all reasonable endeavours to ride the retainers horse at the trainers establishment at least twice per month for the purpose of forming such subjective views."
Clause 8.3 of the agreement provides liquidated damages for breach of the agreement:
"In the case of a breach by Jockey by opting not to ride the Retainer's horse (unless injury) damages are to be liquidated and assessed at a sum of minimum £30,000 per race not ridden".
As Lord Justice Jackson noted, the contract contained positive obligation to ride Native Khan whenever requested to do so and a negative one of not riding on a competing horse when asked to ride Native Khan. In accordance with his agreement Mr. Fallon rode Native Khan at Newmarket on 11 April winning convincingly.

On Bank Holiday Monday Mr. Fallon texted Mr. Araci's daughter who was in charge of her father's stable to say that he could not ride in the Derby. That was because he had agreed to ride Recital for a competing syndicate. Mr. Araci managed to find another jockey to ride Native Khan at short notice but he faced the prospect of competition from his own jockey in the stakes.

The Interim Injunction Application
Mr. Araci applied to Mr. Justice MacDuff on Wednesday for an injunction to restrain Mr. Fallon from riding Recital. His lordship heard the application on Thursday and delivered his judgment on Friday. The learned judge rejected the application even though he regarded Mr. Fallon's defence as fanciful. Apparently, Mr. Fallon said that Mr. Araci had instructed him to race in the French Derby which was to take place on 5 June rather than the English one the previous day. The judge found for the defendant on the ground that the liquidated damages clause provided adequate relief for Mr. Araci. Dissatisfied with Mr. Justice MacDuff's decision, Mr. Araci appealed to the Court of Appeal which sat on Derby Day morning.

The Appeal
The Court of Appeal allowed the appeal on two grounds:
"First, the judge erred in law in holding that damages would be an adequate remedy. Secondly, although weight must be a matter for the trial judge not this court, in my view the various factors identified by the judge are not capable of justifying refusal of relief in a clear case such as this."
As for the first ground clause 8.3 was addressed to the breach of the positive obligation of failing to ride the claimant's horse when asked to do so under clause 6.1 (b) but not to the negative obligation of not riding for a competitor under clause 6.1 (a). Damages for breach of the latter obligation would be much less easy to quantify. As Lord Justice Jackson put it at paragraph [49]:
"49. There is a real possibility that if the defendant rides Recital this afternoon, he will finish ahead of Native Khan by reason of (a) his skills as a jockey and (b) his special knowledge concerning Native Khan and the strategy of the claimant's team.

50. Quite apart from the financial rewards which flow from winning the Derby, there is also the prestige which attaches to any horse and any horse owner following such a triumph."
As for the exercise of judicial discretion the Lord Justice Jackson observed perhaps somewhat icily at paragraph [65]:
"The defendant voluntarily entered into a contract for substantial reward containing both positive and negative obligations. There is nothing special about the world of racing which entitles the major players to act in flagrant breach of contract. The defendant has promised in the context of a commercial agreement that he will not compete against Native Khan in the Derby this afternoon. In my view, that promise should be enforced."

With those conclusions Lord Justice Elias essentially concurred.

Although not an IP case the is an authority that is likely to be cited in many IP cases particularly those on breach of confidence, restrictive covenants and licences. There was nothing unusual about the contract in this case. Most licence and distribution agreements,l contracts of service and services contracts contain positive as well as negative obligations and many have liquidated damages clauses which are usually controlling. It will be a hard case to distinguish in future.

This is not the first time today that I have blogged about injunctions. I have also given some tips on interim injunction applications in "The Right Way to Move a Motion" on our chambers website. If anyone wants to discuss this case or injunctions generally, he or she should call me on 0800 862 0055 or use my contact form.

06 June 2011

Trade Marks: Prince Ernst August of Hanover & Brunswick etc v OHIM

The challenge by the Prince of Hanover to the decision of the First Board of Appeal upholding the examiner's decision to dismiss the Prince's application to register his family coat of arms as a trade mark is a peach of a case. Unfortunately, the transcript of T-397/09 Prinz von Hannover v OHIM [2011] T-EUECJ 397/09 (25 May 2011) is in French. No English or even Anglophone judges or lawyers seem to have taken part.

Before I go into the facts of the case it is worth reading the Wikipedia articles on the House of Hanover and the House of Windsor for some background. It will be seen that the link with Hanover was broken when Queen Victoria acceded to the throne. The royal family changed its name from Saxe-Coburg and Gotha to Windsor at height of the First World War - just about the time of the Bolshevik revolution in Russia. The current head of the House of Hanover is Ernst August V, Prince of Hanover, the third husband of Princess Caroline of Monaco.

His Royal Highness (if that is how he is to be styled) or Monsieur Ernst August as the applicant's name appears in the law report applied to register the following sign as a Community trade mark for a large number of goods and services in classes 16. 25, 28. 32, 33, 35, 39. 41 and 43:

Looks familiar? Well that's what the examiner thought when he (or she) rejected the application on the ground that it was uncannily similar to the coat of arms of the United Kingdom which is protected under art 6ter of the Paris Convention. The Prince appealed to the Board of Appeal which upheld the examiner.

In an action in the General Court against the Board's decision before Judges Czucz, Lubucka and Gratsia, Prince Ernst August argued that there are significant differences between his sign and the royal coat of arms and that they are put to different uses. Rejecting his argument, the Court held that art 7 (1) (h) of Regulation 208/2009 precludes the registration of signs that fall within the scope of art 6ter of Paris unless such registration is authorized by the competent authorities whom I assume to be Cam, Clegg & Co. in this case. Although the transcript is not altogether clear on the point the Prince seems to have argued (possibly with some justification) that his coat of arms had been in his family just as long as they had been with our royals. The Court held that did not matter when the arms were protected as national emblems under the Paris Convention. Also, they added that Arthur & Felicie [2005] ECR II-4891 doesn't apply since art 6ter prohibits similar as well as identical signs.