18 November 2012

Food and Dragons - the Levi Roots Appeal

Last Christmastide I blogged HH Judge Pelling's decision in  Bailey and another v Graham and Others [2011] EWHC 3098 (Ch) (25 Nov 2011) in "Is there any IP in Recipes? Reflections on the Reggae Reggae Case" 5 Jan 2012. I shall return to the theme this Christmastide to blog the appeal (or rather application for permission to appeal) in Bailey and Another v Graham (aka "Levi Roots") and Others [2012] EWCA Civ 1469. This application came on before Sir Andrew Moritt, Chancellor and Lord Justices Longmore and Davis on the 16 Nov 2012.

The first defendant Keith Valentine Graham is best known to the public as Levi Roots,  He appeared on the TV programme "Dragons Den" to promote his jerk sauce where he attracted £50,000 of investment.  Upon the insistence of his backers he incorporated the third defendant, Roots Reggae Reggae Sauce Ltd, which in turn licensed  G Costa & Co Ltd to make and distribute his sauce in accordance with his recipe,  He has not looked back.   Jamaican food, which was rarely tasted outside Afro-Caribbean homes, has become enormously popular with the general public including Dalmatian dogs as in the clever video on their website.

 The case that I blogged earlier in the year was a claim by Anthony Bailey and Sylvester Williams, to a share in that success on the ground that Mr. Bailey had created the recipe for the sauce.  The trial, which went on from the 8, 10, 14 to 17 and 21 and 22 Nov 2011 and involved 18 witnesses of fact and one expert, was decided entirely on the facts. The judge found that he could not rely on either party's testimony and constructed his judgment on the evidence upon which he could rely that resulted in his throwing out the claim.

Because the case was decided on the facts the trial judge refused permission to appeal.   The claimants applied to Lord Justice Kitchin who dismissed the application on the ground that no issue of law or principle had been raised and that the appellants sought to re-argue the case on the facts.  Undaunted, the claimants obtained a report from a clinical and forensic psychologist on the intellectual functioning and personality characteristics of Mr. Bailey. After administering a number of tests and interviewing him for several hours, the psychologist observed at paragraph [37] that
"Mr Bailey was generally a poor historian, particularly in terms of his ability to recall the chronology of events and to provide detail".
She concluded that he was "a vulnerable individual" with "a significant intellectual impairment, poor verbal memory and a tendency to change his answers in response to repeated questioning." Were he to interviewed by the police, she continued, he would be considered to be vulnerable in terms of  s.77 of the Police and Criminal Evidence Act (1983) and provided with an appropriate adult. His level of cognitive functioning and personality characteristics would also be taken into consideration during a trial and that appropriate safeguards, such as having questions presented to him in simple language, put in place. She respectfully suggested that, 
"had the court been aware of Mr Bailey's vulnerabilities at the time of his unsuccessful claim in the Chancery Division of the High Court, he could have been afforded the same considerations and that this might have enabled him to cope better under cross-examination and to provide more reliable responses to the questions that were put to him."
The application was for permission to adduce this additional evidence which, it was argued, would have resulted in the judge's finding for Mr. Bailey and Mr. Williams.

The Court of Appeal rejected the application for three reasons.   The first was that the claimants could have obtained a report from a psychologist before the trial had they so wished.   As the Chancellor put it at paragraph [44]:
"there can be no doubt but that the evidence could have been available to Mr Bailey and Mr Williams before the trial because Mr Bailey could have submitted himself for examination by [the psychologist] at any time. Whether or not so to do was a matter for the claimants and their advisers, not the defendants. It is said that his solicitors did not appreciate the need to do so, but it was for them to assess Mr Bailey as a client and witness. They do not say what steps they took to do so. They could have obtained this evidence and applied for special measures, if so advised, but did not. The fact is that this evidence was always available to the claimants; the question of diligence does not arise."
Secondly, the evidence would have made no difference even if it had been heard at trial:
"The judge's conclusions on breach of confidence do not depend on the credibility of Mr Bailey. I have referred to the relevant findings in paragraphs 31 to 33 above. The judge's conclusion that the recipe was insufficiently certain is fatal to any claim for breach of confidence, whatever the outcome of the appeal in relation to its disclosure."
Finally, the Chancellor referred to the substance of the report at paragraph [46] and concluded that it actually confirmed the trial judge's assessment that Mr. Bailey was an unreliable witness::
"Though Mr Bailey's IQ, verbal comprehension and processing speed is very low he is not abnormally suggestible or acquiescent. In addition he has a very poor memory and a tendency to change his answers under cross-examination. But this evidence, far from suggesting that Mr Bailey's evidence should have been treated as reliable, confirms the judge's assessment that he could not safely rely on the evidence of Mr Bailey unless admitted, corroborated or against his interest. Even if it could be said that the judge's reference to Mr Bailey's "professed lack of understanding" could be regarded as carrying unjustifiable overtones there is no challenge to his conclusion that Mr Williams was a dishonest witness and claimant."
Although the dismissal of the application disposed of the appeal, the Chancellor considered the various grounds which criticized Judge Pelling's methodology and his consistency in applying it. The Chancellor and Lord Justices rejected the criticisms though they cautioned at paragraph [59] that "The methodology is only appropriate in cases, such as this, where there is no undoubted starting point. In other cases the conventional approach is best used to avoid error."

Shortly after I had published my case note on the trial my friends Lisa and Helen Tse, who run the excellent Sweet Mandarin restaurant in Manchester, asked me about intellectual property in recipes.   I sent them my post. I should mention that Helen is also a solicitor and author as well as a restaurateur and entrepreneur.  Her works include Sweet Mandarin an inspiring story of the family's Odyssey from China to Manchester which I thoroughly recommend.  Helen and Lisa were also on Dragons' Den recently to seek investment for the manufacture and promotion of their  Barbecue, Sweet & Sour and Sweet Chilli Dipping Sauces and I am glad to say that they were successful.   You can see a video of their appearance on Dragons' Den in an article on the Festival of Business (25 Oct 2012) on my other blog, IP Northwest.   As a Mancunian I am just so proud of those sisters.




As I have been getting a lot of instructions from the food and catering industries lately I am thinking of running a one day conference on IP and Food in the New Year.   Topics will cover recipes as trade secrets, branding of food products covering trade marks registration, domain names and geographical indications and of course contracts of all kinds.   I will also offer a platform for my clients to talk about their experiences as well as angels, VCs, representatives of local enterprise partnerships which promote local producers and others. Should anyone wish to attend, speak at or even sponsor such a conference they should call me on 0161 850 0080 or send me a message through my contact form. They can also follow me through Facebook, Linkedin, twitter or Xing.

16 November 2012

Community Trade Marks: Starbucks v Sky

In Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others [2012] EWHC 3074 (Ch) (2 Nov 2012) a group of Hong Kong-based broadcasting, media and telecommunications companies headed by PCCW Ltd. ("PCCW") sued the well-known group of broadcasting and telecommunications companies that operate under the Sky sign for infringement of Starbruck (HK) Ltd's Community trade mark number 4504891 and passing off.

The CTM was as follows:













It was registered for a variety of goods and services in classes 9, 35, 38, 41 and 42, including 
"telecommunication services; … telecommunication of information (web pages), computer programs and data; … radio and television communication services; … television broadcasting services; broadcasting and transmission of radio and television programmes; cable television broadcasting; … transmission of music, films, interactive programmes, videos, electronic computer games".
The proceedings were precipitated by Sky's announcement on 21 March 2012 that it intended to launch a standalone internet protocol TV service under the name "NOW TV" and it actually started transmission on 17 July 2012.   PCCW objected to use of the following signs to designate the new service: 
  • the sign "NOW TV". 
  • the domain name  "NOWTV.com"; and
  • the following logo:








Sky counterclaimed for a declaration of invalidity under art 7 (1) (b) and (c) of the Community Trade Mark Regulation (Council Regulation No 207/2009 of 26 February 2009 on the Community trade mark 24.3.2009 L78/1).

Mr. Justice Arnold considered the counterclaim first.   It was common ground that the figurative elements of the CTM added nothing to the distinctiveness of the mark and that it would be perceived by the average consumer as the word NOW.  After referring to the Court of Justice's decision in Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-0000, [2011] ETMR 34 his lordship concluded at paragraph [116] that the CTM was
"precluded from registration by Article 7(1)(c) in relation to the services in issue because NOW would be understood by the average consumer as a description of a characteristic of the service, namely the instant, immediate nature of the service. The figurative elements of the CTM do not affect this conclusion. In the alternative, if the inclusion of the figurative elements means that the CTM does not consist exclusively of the unregistrable word NOW, I consider that the CTM is devoid of distinctive character and thus unregistable by virtue of Article 7(1)(b)."
Mr, Justice Arnold then considered whether the CTM would have been infringed had it been valid. If the only distinctive features were the figurative elements then the answer was clearly no. If the word "NOW" was inherently distinctive then the mark would have been infringed and Sky would have had no defence under art 12 (b) of the CTM Regulation.

As to passing off, there was evidence between paragraphs [19] and [27] that a PCCW company called Pacific Convergence Corporation (UK) Ltd ("PCCU") had operated an Internet protocol television service in the early years of this century as "Network of the World" or "NOW" television under the following mark
but that had closed down long ago.  Also, another PCCW company called United Kingdom Broadband had operated a wireless broadband service in Berkshire, Hampshire and Surrey as "NOW Wireless Broadband" which had connected 15,802 customers in 2006 but there were only 81 left by the date of Sky's announcement.  Finally, there was evidence that another PCCW company offered a TV service in Chinese in Hong Kong which could be accessed in Britain through its website, YouTube and in-flight entertainment channels on various airlines.   The judge  was not persuaded that any of those activities generated any protectable goodwill in the UK by 21 March 2012 and in any case there was no evidence of actual confusion.  It followed that the action for passing off also failed.

Almost as interesting as the decision itself is the judge's dicta.   He had sharp things to say about solicitors who filed witness statements that contained evidence that was not within the witness's personal knowledge and did not indicate its source.  Exonerating the witness from blame, he said at paragraph [10]:
"The fault lies with the solicitors who drafted the witness statements. They are not alone: in a number of other recent cases involving other firms, I have noted the same defect even in witness statements made by solicitors themselves, including statements by partners of those firms. This slipshod approach to the preparation of witness statements must cease."
The judge also endorsed at paragraph [16] Lord Justice Romer's remarks in Payton & Co Ltd v Snelling, Lampard & Co. Ltd (1900) 17 RPC 48 at 57 that the kind of witness who ought to be called in a passing off case is
"the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of these distinguishing characteristics."
"If he does not know that" added Lord Justice Romer "he is not a customer whose views can properly, or will be, regarded by this court."

Finally, Mr Justice Arnold warned at paragraph [117] that trade mark registries ought to be more careful about the type of combined word and figurative marks that they register:
"I would comment that it appears to me that PCCW only succeeded in obtaining registration of the CTM because it included figurative elements. Yet PCCW is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place."
As the judge had served as one of the Appointed Persons for many years he spoke from experience.   I should be surprised if this did not lead to a change in registration practice at least in Newport if not in Alicante.

There is a lot of law in this case as is typical with Mr Justice Arnold's judgments and I have discussed only the points that leap out at me.   Should anyone want to talk about specific aspects of the judgment, he or she should call me on 0161 850 0080 or send me a message through my contact form.  I can also be reached on Facebook, Linkedin, twitter or xing,

04 November 2012

Registered Designs: Mainetti (UK) Ltd v Hangerlogic UK Limited

Two actions came before before Mr. Recorder Purvis in Mainetti (UK) Ltd v Hangerlogic UK Limited [2012] EWPCC 42:
  • a claim by Mainetti (UK) Limited ("Mainetti") that Hangerlogic UK Limited ("Hangerlogic") had infringed its three registered designs for various clothes hangers and a counterclaim by Hangerlogic for the revocation of those design registrations: and
  • a. claim by Hangerlogic for a declaration that a modified range of garment hangers did not infringe Mainetti's registered designs and a counterclaim by Mainetti for infringement.of those registered designs.
The recorder found for Mainetti in both sets of proceedings.

The Registered Designs
Mainetti's design registrations were as follows:
  • Design number 2080944 for a garment hanger registered as of 5 Feb 1999: a 'clip hanger' used to suspend trousers, shorts and skirts from two clips ("the clip design");
  • Design number 2060713 for a garment hanger registered as of 7 Nov 1996: a hanger used for jackets ("the jacket design"); and 
  • Design Number 2053286 for a garment hanger registered as of 11 Jan 1996: a hanger used for shirts, T-shirts, blouses and dresses ("the tops design").
Hangerlogic's Products
Mainetti produced the following overlays of the registered designs and Hangerlogic's products::

 Clip design






















Jacket design





















Tops design

Validity
Hangerlogic attacked Maintetti's registrations on the ground that the designs were not new.

All the designs were registered before 9 Dec 2001 when The Registered Designs Regulations 2001 came into effect. Those regulations implemented the European Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035) ("the directive") by amending the Registered Designs Act 1949. Reg 12 (2) of the 2001 regulations provides:
"The Act of 1949 as it has effect immediately before the coming into force of these Regulations shall continue to apply in relation to registrations to which this Regulation applies (“post-1989 registrations”) so far as the Act relates to the cancellation or invalidation of such registrations (other than cancellation by virtue of section 11(3) of that Act and by reference to an expiry of copyright occurring on or after the coming into force of these Regulations)."
In other words the validity of a registration is determined in accordance with the Registered Designs Act 1949 as it stood before it was amended.

S.1 (4) of the formerly Act provided:
"A design shall not be regarded as new for the purposes of this Act if it is the same as a design –
(a)    registered in respect of the same or any other article in pursuance of a prior application, or
(b) published in the United Kingdom in respect of the same or any other article before the date of the application
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade."
At paragraph [16] Mr. Recorder Purvis directed himself that the question that he had to decide was whether the registered designs differed only in immaterial details or variants commonly used in the trade from the prior art and that those were distinct questions.   It seemed to him that the only sensible way of applying that test was
  1. To identify the differences between the designs; 
  2. To consider whether the differences are immaterial (as opposed to 'substantial' – see Whitford J in Valor Heating Co. Ltd. v. Main Gas Appliances Ltd [1973] RPC 871 at 878-9); and
  3. If the differences wre not immaterial, to ask whether they simply consist of variants commonly used in the trade. 
He added that "in making the assessment of materiality of differences, the designs must be looked at as a whole, both on the basis of a side-by-side comparison and 'also on the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw.'(Valor at 878)."

Hangerlogic cited no less than 13 prior art designs: 5 each for the clip and tops designs and 3 for the jacket. That seems to have irritated the judge.  He said at paragraph [17]:
"It is unclear why so many were cited. It should have been clear to Hangerlogic which was their best case on validity on each design. There is no need to burden a case like this (particularly in the Patents County Court) with an unnecessary proliferation of citations."
In paragraphs [18] to [21] he considered the invalidity case in relation to each registered design and concluded that none of those designs was invalid.

Infringement
Art 9 of the directive provides:
"Scope of protection
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."
The judge directed himself at paragraph [22] that "the test is whether the designs alleged to infringe give the same overall impression, seen through the eyes of a notional 'informed observer'." He summarized the principles on the application of the test as follows:
"(a) The comparison to be made is a visual one between the alleged infringement and the design as it appears on the Register. It may be useful to compare the alleged infringement with an actual product made in accordance with the registered design (being careful to make sure that it is in all respects the same). See Pepsico v Grupo Promer (C-281/10P).
(b) The comparison is to be made through the eyes of the 'informed user'. Such a person is particularly observant, has a general knowledge of the features which are normal in the existing art, but does not have the extent of knowledge of a designer or technical expert. See Shenzen v OHIM (T-153/08).
(c) The scope of protection to be given will vary according to the degree of design freedom enjoyed by the designer in developing his/her design. See Article 9(2) of the Designs Directive. Design freedom may be restricted by technical considerations, functional considerations and (to some extent) economic considerations (General Court in Grupo Promer [2010] ECDR 7 and Arnold J in Dyson v Vax [2010] FSR 39). Thus the common presence of a feature which is required for a technical reason will not be significant in itself. However, commonality in the way that feature is executed may well be significant.
(d) The overall impression test depends also on the 'existing design corpus' (see Recital 14 to the Directive). As put by the General Court in Grupo Promer, this means that the informed user would'automatically disregard elements that are totally banal and common to all examples of the type of product in issue and will concentrate on features which are arbitrary or different from the norm.' HHJ Birss in Samsung v Apple [2012] EWHC 1882 pointed out that there is a spectrum of banality from features which are ubiquitous through features which are occasionally found in the art to features which are entirely unique. The significance of any feature which is common to the registered design and the alleged infringement will depend on its position in this spectrum.
(e) The comparison involves attention to detail but not 'minute scrutiny' (Apple v Samsung at para 58).
(f) Whether or not the design was copied by the alleged infringer is irrelevant.
(g) Although it is necessary to consider the significance of individual features of the design, one must beware approaching the design as if it were a patent claim consisting of a list of features. The problem with that approach is that it turns into a debate about the level of generality at which the features should be described. See Dyson v Vax [2012] FSR 4 at 30. Ultimately, an overall visual comparison has to be made."
Applying those principles, Mr. Recorder Purvis found plenty of scope for design freedom within the basic parameters imposed by the function such as the need for a hook to fit a hanging rail positioned in the middle of the hanger, arms which are roughly the size and shape of the shoulders of a garment and so on.  He was provided with a book entitled 'Cintres Hangers' by Daniel Rozensztroch which contained photographs of hundreds of different hangers demonstrating the wide scope for the creativity of the designer that exists in the world of hangers, even extending to the world of 'disposable' plastic hangers.  

As for the design corpus the judge relied on the citations and Rozensztroch's book and concluded at paragraph [27]:
"My overall impression in terms of each design at its date of application is that it did not represent a startling and radical new departure from the norm. None of the general features found in the designs can be said to be strikingly unique in and of themselves. However, both the specific execution of those features and the way they are combined are in each case original in the sense of conveying a particular overall impression which is distinct and recognisable. An informed observer would have had no difficulty in recognising that originality."
As the real users of these products are retailers, the parties agreed that the informed user is someone in the position of a buyer responsible for purchasing hangers for a retail store (or group of stores). Such a buyer would be sensitive to design differences and very discerning when it comes to the appearance of a hanger.  One factor that influenced the recorder particularly was that the Hangerlogic designs are interchangeable with the equivalent Mainetti designs.  If the educated eye of a retail buyer considers that two hangers can be used interchangeably,the judge reasoned that this was relevant to the question of whether the designs create the same impression.  After carrying out the exercise mentioned above, he concluded that all three designs infringed.

The Modified Range
His Honour did not consider that  the changes made to the modified hangers had created a design which gave a different overall impression and concluded that those hangers also infringed.

Further Information
Should anyone wish to discuss this case with me he or she can all me on 0161 850 0080 or send a message through my contact form.   I can also be reached through Facebook, Linkedin, twitter or xing,

02 November 2012

Samsung v Apple: "Be you never so high ....."

In Apple v Samsung: the Appeal  I discussed the notice that Apple was ordered to display on its British website and the words that it actually displayed.  Many people I spoke to (especially those who own Apple phones and tablets) thought that notice was very clever and marvelled at the spin that Apple had put on bad news.   It appears from "Apple ordered to re-write 'inaccurate' Samsung statement"  that the Court of Appeal took a different view and ordered Apple to take the notice down and replace it with one that does comply with their lordships' intentions.

Apparently Apple's counsel asked the Court for 14 days to compose its new notice.  That seems to have gone down like a lead balloon,    Lord Justice Longmore replied:: "We are just amazed that you cannot put the right notice up at the same time as you take the other one down."  Sir Robin Jacob, added: "I would like to see the head of Apple make an affidavit about why that is such a technical difficulty for the Apple company."

The BBC's website links to a number of other commentaries on the hearing of which the most amusing is The New Statesman's "Apple reprimanded over Samsung non-apology" 1 Nov 2012 with its lovely cartoon of one "Sad Mac",  Referring to the detail of Judge Birss QC's order earlier in the year which I discussed in Samsung v Apple - the Aftermath on 28 Aug 2912 it noted that "the judge failed to mention one important rule: don't take the piss."   A fuller report on the hearing is carried by Bloomberg "Apple Leaves U.K. Judge at ‘Loss’ Over Samsung Web Posts".

News of the case quickly crossed the Atlantic.  I actually learned of it from the Washington Post Tech News Daily "British court: Apple must reissue apology to Samsung" 1 Nov 2012.  The comments on the Washington Post and Bloomberg articles are interesting. "Well maybe the court should first rewrite its opinion, if it can" suggested one.  Another added "This is a childish judgement and Apple put a finger in the judge's eye by telling him he was wrong in his judge and they don't like it.  What else is new about Apple bashing but that it put some meaning into some people's sad lives." However, yet another wrote: "It's pretty simple what happened here. Apple tried to push their luck, and they got caught.  They've turned a minor setback into a much bigger, more embarrassing setback."

If and when a transcript is published I shall return to this subject with some analysis.