29 October 2014

Intellectual Property Act 2014: The New Law on Opinions











As I indicated in How the Intellectual Property Act 2014 changes British Patent Law JD Supra 21 June 2014 s.16 of the Intellectual Property Act 2014 amends s.74A and s.74B of the Patents Act 1977 and inserts three new subsections into s.73. The upshot as explained in paragraph 4 and paragraph 5 of the IPO's guide Expansion of the Patent Opinions Service: business guidance is that the range of questions upon which an examiner's opinion can be obtained has been expanded and the Comptroller now has power to revoke patents which are found to be invalid.

Where to find the Law
The Patents Act 1977 has now been amended by art 3 and the Schedule to The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 (SI 2014 No 2330) (see Jane Lambert The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 6 Sept 2014) and corresponding changes to the Patent Rules 2007 have been made by rule 9 and rule 10 of The Patents (Amendment) (No. 2) Rules 2014 (SI 2014 No 2401). The most convenient place to find the amended legislation are the unofficial consolidations of the Patents Act 1977 and the Patents Rules 2007. There is also an updated Opinions manual which incorporates all those legislative changes.

Questions upon which an Opinion can be sought
The previous legislation provided for opinions on "whether a particular act constitutes, or (if done) would constitute, an infringement of the patent" and "whether, or to what extent, the invention in question is not patentable" because of anticipation or obviousness. The new s.74A (1) provides:
"The proprietor of a patent or any other person may request the comptroller to issue an opinion on a prescribed matter in relation to the patent."
Rule 93 (5) of the Patent Rules 2007 as amended provides:
"The prescribed matters for the purposes of section 74A(1) are as follows—
(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention;
(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;
(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;
(f) whether a supplementary protection certificate is invalid under Article 15 of the Medicinal Products Regulation; and
(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation."
The other provisions of s.74A remain unchanged and the only change to s.74B in the repeal of paragraph (c) of subsection (2).

Power to revoke Invalid Patents
The new subsections that have been inserted into s.73 are as follows:
"(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be exercised before—
(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76."
Practice and Procedure
The practice and procedure for obtaining an opinion is largely unchanged and is set out in full in the Opinions Manual. 

Designs
S.11 of the 2014 Act inserted a new s.28A into the Registered Designs Act 1949 and a new s.249A into the Copyright Designs and Patents Act 1988 which provides for examiners' opinion on registered designs and unregistered design right issues.  I have discussed those amendments in How the Intellectual Property Act 2014 changes British Registered Design Law 19 June 2014 and How the Intellectual Property Act 2014 will change British Unregistered Design Right Law 11 June 2014 JD Supra. Although the 1949 and 1988 Acts have been amended the amendments are not yet in force. According to paragraph 5 (4) of the IPO's Business guidance on changes to the law on designs  the intention is to launch an opinion service for designs in 2015.

Importance of the Opinion Service
One of the reasons why this country appears to punch below its weight in the number of European patent applications is the cost of enforcement is perceived as prohibitive. That is no longer true with the capping of costs in the Intellectual Property Enterprise Court but the perception remains.  The Opinions Service may be one way to change that perception.

Further Information
Should you wish to discuss this new legislation or patents law in general call me on 020 7404 5252 during normal office hours or message me through my contact form.

Further Reading

Intellectual Property Office
20 June 2014
Jane Lambert
14 June 2012
Jane Lambert
16 Jan 2006
Jane Lambert
14 Dec 2005
Jane Lambert
9 Dec 2005

17 October 2014

Flos putting us all through the Mill

In 1962 Achille and Pier Giacomo Castiglioni designed a floor lamp with a marble base and a curved lead to a bowl shaped reflector.  Those lamps, known as the Arco lamp and you can see a picture of one of those lamps in Achille Castiglioni's studio in Quick History: The Arco Lamp in Apartment Therapy. Original Arco lamps retail for £1,373 but it is possible to buy a reproduction for a fraction of that price as the Prime Minister's wife did recently (see "Samantha Cameron counts the cost of her repro lamp" 3 Oct 2011 The Guardian).  

The reason why it is possible to buy a reproduction lamp is that s.52 (2) of the Copyright, Designs and Patents Act 1988 ("the CDPA"provides that after the end of the period of 25 years from the end of the calendar year in which articles made from an original artistic work in which copyright subsists with the licence of the copyright owner are first marketed, that work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work.  Copyright usually subsists in an original artistic work for the life of the author plus 70 years (see s.12 (2) of the CDPA) but s.52 provides an exception to that term. The reason for the exception is that an author of such a work could and should register his or her design under the Registered Designs Act 1949 or the Community Designs Regulation  S.52 reflects the demarcation that has existed for many years between industrial designs which are covered by art 5quinquies of the Paris Convention for the Protection of Industrial Property of March 20, 1883 and artistic works which are protected by art 2 (1) of the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886.

This demarcation between art and design which had been respected by judges and legislators around the world for well over 130 years has been thrown into disarray by the decision of the Court of Justice of the European Union in Case C168/09 Flos SpA v Semeraro Casa e Famiglia SpA  [2011] ECDR 8, [2011] RPC 10, [2011] EUECJ C-168/09. This decision resulted from a reference under art 234 of the Treaty of Rome (now art 267 of the Treaty on the Functioning of the European Union) from the Tribunal of Milan in the course of an action for copyright infringement. Flos SpA ("Flos") which owned the copyright in the Arco lamp sued Semeraro Casa e Famiglia SpA ("Semeraro") for importing from China a lamp called the ‘Fluida’ lamp, which, in Flos's submission, imitated all the stylistic and aesthetic features of the Arco lamp.

In its defence, Semeraro relied on art 239 of the Italian Intellectual Property Code which provided:
"The protection conferred on industrial designs under point 10 of the first paragraph of Article 2 of Law [No 633/1941] shall not be enforceable as against products based on designs that were in, or had entered into, the public domain prior to the entry into force of Legislative Decree [No 95/2001]."
Flos argued that the exception provided by that article was incompatible with art 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L289 28.10.1998 p 28 ("the Designs Directive") which provides:
"A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State."
Accordingly, the Tribunal referred the question of compatibility to the CJEU which to the surprise of many (including yours) truly replied:
"1. Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.
2. Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective of the date on which those acts were performed."
If anything could possibly drive me into the arms of UKIP it would be decisions like this one.

This judgment has been criticized widely and it may not be followed because the CJEU has no doctrine of stare decisis as such but it is for the time being the law. Possibly fearing claims against the UK for non-implementation of a directive following Joined cases C-6/90 and C-9/90 Francovich and others v Italian Republic Parliament enacted the Enterprise and Regulatory Reform Act 2013 s.74 of which omits s.52. s.74 (9) (g) and para 20 of Sched 1 to the CDPA. As this repeal will cause all sorts of problems HM government has not yet implemented it.  Instead it is holding a Consultation on transitional provisions for the repeal of Section 52 of the Copyright, Designs and Patents Act 1988 which closes on 27 Oct 2014.

As the repeal will revive long dead copyrights and outlaw purchases such as the one by Mrs Cameron mentioned above it will be wonderful for designers but appalling for consumers and many importers and retailers. Accordingly the government wishes to provide a transition period to implement s.74 of the Enterprise and Regulatory Reform Act 2013:
"The Government’s objective is to ensure that rights holders and designers are able to protect their copyright for the full duration of copyright protection. However, the Government wishes to ensure that the change in law is implemented in a way that provides for a fair and proportionate transition period. A proportionate transition period will fulfil the Government’s other objective of ensuring that businesses have sufficient time to adjust and minimise unnecessary harm to UK businesses that have lawfully relied on the permitted act contained in section 52 of the CDPA."
HMG has considered a number of suggestions for the duration of this transition period ranging from right now to 10 years or longer. As 10 years was considered too long by the CJEU the government is consulting on 3 years.

Another problem, as the consultation document acknowledges, is that "there is uncertainty as to which items would be protected" and "many businesses are unavoidably unsure of what items would be affected by the change in law, and assumptions have been made as to what constitutes an artistic work."  Already solicitors letters are flying about:
"The Government believes that a number of rights holders are likely to assert their intellectual property rights – the Government has seen correspondence from rights holders where they have contacted businesses that trade in unlicensed copies of their licensed products for potential infringement of their intellectual property rights. In some cases, rights holders have written to businesses trading in unlicensed copies of their products, citing copyright infringement of their works, despite section 52 of the CDPA currently remaining in force. The Government has received other anecdotal evidence that some businesses that sell lawfully manufactured or imported unlicensed copies online have been subject to take-down notices or action, and other businesses being accused of being “infringers” or “pirates” despite their business activities being lawful under section 52 of the CDPA."
This is imposing a significant cost on British business:
"The cost to identify which products could infringe copyright could be high, and in some cases it may require potentially expensive legal disputes. These legal disputes are likely to affect smaller businesses disproportionately as they may not have the resources to pursue or defend such actions. The legal uncertainty and fear of copyright infringements (or fear of potential criminal liability due to copyright infringement) could also have a “chilling effect” on planned investment in new products."
One of the questions on which HMG is consulting is whether it should issue non-statutory guidance on what items are likely to attract copyright in the form of a “Copyright Notice”, that is to say a document published by the IPO that provides basic copyright guidance the object of which would be to provide "an authoritative and impartial reference point on areas of copyright law."

This is a complex issue which affects just about everybody. Should there ever be a referendum on EU membership this could well be an issue. New technologies such as 3D printing will complicate the debate, especially since there is now a new exception under s.28B of the CDPA which permits personal copies of copyright works for personal use. If anyone wants to discuss Flos, the repeal of s.52 of the CDPA or any issue of copyright or design law he or she should call me on 020 7404 5252 during office hours or message me through my contact form. You can also tweet me, write on my wall or contact me through Linkedin or Xing.

Further Reading

16 October 2014

Use of a Trade Mark: Specsavers v ASDA



In Community Trade Marks: Specsavers v ASDA 7 Feb 2012 NIPC Law I analysed the litigation that had taken place between two well known retailers in which the Court of Appeal considered how far an aggressive marketing campaign can go without infringing trade mark law. As I said in my case note Specsavers International Healthcare Ltd and others ("Specsavers") had brought an action for trade mark infringement and passing off against the supermarket chain Asda Stores Ltd. ("ASDA") for using the marketing materials that I identified in my note and Asda counterclaimed for revocation of Community trade mark 1358589 depicted above ("the wordless mark") for non-use.

History of the Litigation
The action and counterclaim came on for trial before Mr Justice Mann who found that the strapline "Be a real spec saver at ASDA" infringed the word mark under art 9 (1) (c) of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 Feb 2009 on the Community trade mark) but otherwise dismissed the claim. He also revoked the wordless logo mark for non-use. Both sides appealed to the Court of Appeal (Lord Justice Kitchin, Sir John Thomas, the President of the Queen's Bench Division and Lady Justice Black) which allowed the appeal on some issues but not on others and dismissed Asda's cross-appeal.  The Court of Appeal felt unable to make a decision on the revocation of the wordless trade mark or whether it had been infringed without the guidance of the Court of Justice of the European Union ("the CJEU").

Accordingly, the Court of Appeal referred the following questions to the CJEU:
"1. Where a trader has separate registrations of Community trade marks for
(a) a graphic device mark
(b) a word mark
and uses the two together, is such use capable of amounting to use of the [figurative] mark for the purposes of Articles 15 and 51 of Regulation [No 207/2009]? If yes, how is the question of use of the graphic mark to be assessed?
2. Does it make a difference if:
(a) the word mark is superimposed over the [figurative element]?
(b) the trader also has the combined mark comprising [the figurative element] and [the] word mark registered as a Community trade mark?
3. Does the answer to [the first and second questions] depend upon whether the graphic device and the words are perceived by the average consumer as [on the one hand] being separate signs; or [on the other hand] each having an independent distinctive role? If so, how?
4. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of [either the] likelihood of confusion under Article 9(1)(b) [of Regulation No 207/2009], or unfair advantage under Article 9(1)(c) of[that regulation]? If so, how?
5. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?"
The CJEU considered those questions in  C-252/12 Specsavers Optical Superstores Ltd and Others v Asda Stores Ltd [2013] WLR(D) 287, ECLI: EU: C:2013:497, [2013] Bus LR 1277, EU: C: 2013:497, [2013] EUECJ C-252/12 and gave the following answers:
"1. Article 15 (1) and Article 51(1) (a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.
2. Article 9 (1) (b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.
3. Article 9 (1) (b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of that provision."
ASDA and Specsavers settled their differences as far as they could but the appeal against the revocation of the wordless mark remained. As ASDA no longer had an interest in that appeal the Court of Appeal invited the Registrar of Trade Marks to intervene on the public's behalf.  The Registrar's counsel recognized that her client's role was to protect the public interest by intervening to the extent necessary to prevent invalid trade marks being restored to the register and assisted the Court by rehearsing the counter-arguments to Specsavers' appeal, while at the same time maintaining a balanced view consistent with the Registrar's position.

The Issue
The question before the Court in Specsavers International Healthcare Ltd and Others v Asda Stores Ltd (Rev 1) [2014] EWCA Civ 1294 (15 Oct 2014) was whether the combination of the wordless mark with Specsavers word mark as in the following example ("the Shaded logo mark") constituted "use" of the wordless mark within the meaning of art 15 (1) (a) of the Community trade mark regulation.


The Judgment
After analysing the CJEU's judgment Lord Justice Kitchin summarized the Court of Appeals task as follows:
"in my judgment it follows from all of the foregoing that the national court is required to consider the use which has been made and to ask itself whether the differences between the form in which the mark has been used and that in which it is registered do not change the distinctive character of the mark as registered. In carrying out that exercise the court may ask whether the use relied upon is such that the trade mark as registered (here the Wordless logo mark) serves to identify the goods or services as those of a particular undertaking (here the Specsavers group). Put another way, if the mark as registered (here the Wordless logo mark) is used only as part of a composite mark (here the Shaded logo mark), the use must be such that the mark as registered is itself perceived as indicative of the origin of the goods or services. Moreover, it is permissible to take into consideration that the mark has always been used in a particular colour in so far as this affects how the mark is perceived by the average consumer."
His Lordship did not consider Specsavers' use of the Shaded logo mark in the above example as "a very promising basis for an argument" that they had used the wordless mark since the word Specsavers was distinctive and appeared in prominent letters in a contrasting colour across the centre of the mark. However the CJEU had directed that consideration must be given to all of the use that has been made of the Shaded logo mark, and to the perception of the average consumer and in the particular circumstances of this case there was, perhaps unusually, powerful evidence of both.  First, Specsavers had made very substantial use indeed of the Shaded logo mark over many years. Secondly, none of Specsavers' major competitors had a logo which was remotely similar to the Shaded logo mark or the wordless mark. Thirdly, the way in which ASDA developed its own competing logo while not confusing raised the inference that the public identified Specsavers by reference to the wordless mark. Fourthly, that was supported by the testimony of Dame Mary Perkins
"that, when she visits cities and towns where Specsavers have an outlet, the first thing she does is "look for the shapes" or, in other words, the Shaded logo mark. She also explained that she routinely asks taxi drivers how they recognise a Specsavers outlet, and they commonly tell her, in words of their own, that they look out for the overlapping green elipses."
In a conclusion with which Sir John Thomas (now Chief Justice of England and Wales) and Lady Black agreed, Lord Justice Kitchin said at paragraph [34]:
"Drawing the threads together, I have come to the conclusion that, in the rather unusual circumstances of this case and notwithstanding my initial impression to the contrary, Specsavers have established that much of the use they have made of the Shaded logo mark including, in particular, its use on signage, does also constitute use of the Wordless logo mark, for the evidence in this case shows that it has been such that the Wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the Wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers. In short, much of that use has been such that the differences between the Shaded logo mark and the Wordless logo mark have not changed the distinctive character of the Wordless logo mark; and the Wordless logo mark has itself been seen as a trade mark and not simply as background. It follows that Specsavers have established that they have made genuine use of the Wordless logo mark."
Comment
At paragraph [37] Lord Justice Kitchin said that the Registrar had invited the Court of Appeal to make it clear that each case must be determined on its own facts. He had expressed a concern that were the Court of Appeal to allow the appeal, the Registry might be faced with many applications to register relatively commonplace outline shapes of logo marks. The Court was entirely content to emphasize that each and every case must be decided on its own facts and in the light of all the relevant circumstances. Indeed, Lord Justice Kitchin went further and said that, in general, it was unlikely that the background to a mark would be perceived by the average consumer as an indication of origin. However, this was an unusual case and Specsavers were supported in their appeal by what his Lordship consider to be convincing evidence.

This is an important case and one that is likely to be referred to frequently in future. Despite the cold water liberally poured by the Lord Justice Kitchin on behalf of the Court in paragraph [37] of his judgment I should not be surprised by a significant increase in the number of device mark applications on the strength of this case and the decision of the CJEU. Should anyone wish to discuss it with me or trade marks law generally, he or she should not hesitate to call me on 020 7404 5252 during normal office hours. I can also be reached through my contact form and you can tweet me, write on my wall or contact me through Linkedin or Xing.