NIPC Law

In Case T-336/03, Les Éditions Albert René v OHIM [2005] EUECJ T-336/03 (27 Oct 2005) the Court of First Instance had before it an application for annulment from a disappointed opponent, for a change. The opponent had failed before the Oppositions Division but actually managed to persuade the Board of Appeal to reject the registration in respect of some specified goods. Background The mark in question was the word MOBILIX. Orange A/S ought to register that mark in classes 9, 16, 35, 37, 38 and 42 for a large variety of goods and services ranging from telecommunications apparatus and calling cards to answering services and installation services. The opponents, publishers of the well-known "Asterix" books, opposed the application on the grounds of earlier mark under art 8 (1) (b) of the CTM Regulation and earlier mark with a reputation in the Community under art 8 (5). The registration on which they relied was OBILIX which they had registered for a variety of goods in classes ...

In Case T-305/04 Eden v OHMI [2005] EUECJ T-305/04 (27 Oct 2005), the Court of First Instance dismissed Eden SARL’s claim for nullification of the First Board of Appeal’s decision in « odeur de fraise mûre ». Eden had tried to register a strawberry smell for a wide range of goods in classes 3, 16, 18 and 25. The examiner threw out the application on the grounds that (1) the mark was not capable of being represented graphically within the meaning of art 4 of the CTM Regulation and was therefore covered by the ground for refusal provided for in art 7(1)(a) of the Regulation and (2) that it was devoid of any distinctive character within the meaning of art 7(1)(b) in respect of some of at least the goods claimed. The Board upheld the examiner on the first of those grounds. Relying on the European Court’s judgment in C-273/00 Sieckmann v OHIM ECR 1-11737 where it held that “a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it ca...

Budapest Treaty: Designation of International Depository Authority The WIPO announced today that the Banco Nacional de Algas (BNA ), is designated as an international depositary authority within the meaning of article 6 (2) of the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. Perhaps more interesting is the blurb on the home page which indicates the BNA’s role in the Spanish Global Biodiversity Information Facility, That is described as “the biodiversity equivalent of the Human Genome Project”. Its  objective is to establish an interoperable network of biodiversity databases, aiming to be a basic tool for the scientific development of any country for better protection and use of global biodiversity

This is a case that in Holmfirth we call a "mullock". An application to register the sign CLOPPENBURG as a word mark for "retail trade services" in class 35 was rejected. The applicant appealed to the Board of Appeal but its appeal was rejected. The disappointed applicant then brought annulment proceedings against OHIM in the Cour of First Instance. "Nothing unusual in that", one might think. Except that OHIM supported the application . Now the Board of Appeal's decision is a little hard to follow. Cloppenburg is the name of a town in Lower Saxony of about 28,000 inhabitants and a local government district or Landkreis of some 150,000 souls. That makes it about the size of Ilkley and its website suggests that it is quite similar. Its attractions include a city park and folk museum. According to the CFI, the Board took the view that the word designated the town and Landkreis, that towns and districts of the size of Cloppenburg were regularly refe...

Some interesting stuff in today's Alicante News from OHIM: Madrid In the first year of the EC's accession to the Madrid Protocol, it has been designated in more than 6,500 applications received by WIPO in Geneva. On the basis of the designations received at OHIM, the top 10 offices of origin are: USA 658 Germany 637 Switzerland 589 Benelux 370 France 314 followed by Australia, UK, Italy, Japan and Austria in that order. In that same period, OHIM received more than 1,800 international applications from CTM owners in Germany, the UK, Spain, France, Italy, the Netherlands, Sweden, Austria, Finland and Ireland. Designs There is also quite a good article on Community designs, " What is your design protected against?"

I am again indebted to vnunet.com for this item. According to Ken Young's article " UK firms flouting spam regulations ", over a third of UK firms are flouting regulations on email privacy. The regulations concerned are The Privacy and Electronic Communications (EC Directive) Regulations 2003 which implement Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) ("the Telecomms Data Protection Directive"). The article complains that the Information Commissioner has never chased the spammers and the reason given for that reported by Ken Young is that many of the offenders appear to  be based overseas. It is perhaps worth mentioning that there is a right of action under reg. 30 (1): "A person who suffers damage by reason of any contravention of any of the requireme...

Fascinating insight into the way Americans conduct civil litigation is available from the draft settlement agreement between ICANN and Verisign over the running .com registry. I must admit that I had not been following this dispute very closely so cannot comment on it. What I do find interesting is that a settlement agreement is exposed to public and purports to be subject to public approval. However, that is probably because ICANN is a strange hybrid of a private company attentive to the general public but nevertheless accountable in the last resort to the US Department of Commerce. The main terms of the proposed settlement are that: (1) Verisign shall announce its support for ICANN as the appropriate technical coordination body for the domain name system, in particular with respect to Internet domain names, IP address numbers, root server system management functions, and protocol parameter and port numbers. (2) Verisign will not participate in, contribute moneys for, encourage or pr...

I have become uncharacteristically chummy towards Microsoft lately with kind words about Jerry Fishenden's speech on ID cards (" Microsoft's Jerry Fishenden condemns ID Card Plans " 21 Oct 2005). I am going to be nice to them again following a repor t on today's BBC website that "Microsoft has joined a Yahoo-backed effort to digitize the world's books and other works to make them searchable and accessible to anyone online." Apparently, they are going to start with works already in the public domain to avoid the legal challenge to a similar effort by Google. If Microsoft does what it says it will do, I may even consider upgrading my operating system and Office applications when the new versions come out.

For anyone who is not already a patent agent with a lot of experience of the PCT , a short paper on the WIPO website entitled " Protecting your Inventions Abroad " is invaluable. It starts off with the really basic stuff such as "I have an invention. How can I protect it in several countries?" and "What is the Patent Cooperation Treaty (PCT)?" to more substantial information on filing costs, priority, searches and sources of information. This is so good that I am putting a link to this article from our public access blog nipc Inven tion.

This was a reference to the ECJ under art 234 EEC from the Hague regional court of appeal. The proceedings arose in an appeal by the importer of a consignment of "Aquafresh" toothpaste from South Africa from the refusal of the lower court to award damages for the impounding of those goods by the Dutch customs authorities in March and April 2002 upon the request of SmithKline, the proprietor of the "Aquafresh" trade mark. The appeal court referred several questions to the ECJ which the Court re-formulated as follows: (1) Can a trade mark proprietor may prevent the introduction into the EC, under the external transit procedure or the customs warehousing procedure, of original goods bearing his registered mark? (2) Can the trade mark proprietor may prohibit the offering for sale or the sale of original products placed under the external transit procedure or the customs warehousing procedure? and (3) Where does the onus of proof lie? The ECJ answered those questions a...

The WIPO has announced today that Nepal will accede to the Berne Convention with effect from 11 Jan 2006. The last two states to join were Uzbekistan on 19 April 2005 and the Comoros on 17 April 2005. The USA only joined on 1 March 1989. See Treaties Database Contracting Parties on the WIPO website for current members.

My US colleague Toni Tease , who practises in Montana, has an interesting article in the latest issue of her newsletter on a recently enacted statute in her state that appears to go a long way towards data protection. Indeed it may be cheaper and a lot more workable than our approach in Europe because there is no need for a bureaucracy or the regulatory burden of registration or notification. If I understand the statute correctly, it requires what we would call data controllers to notify promptly data subjects within the state of any unauthorized access to their personal data. There is also a duty to delete personal data when no longer needed. The legislation is due to come into effect on 1 March 2006 and Montana is one of several states in the West with such legislation. One of the reasons why we have the " Safe Harbor " arrangements with all the complex contractual provisions that those arrangements involve is that the US has not provided much statutory protection for pers...

An all Leeds affair between Yorkshire's finest. Lupton Fawcett on one side and Walker Morris on the other (though their respective barristers came from London). And all for a fight over s.37 of the Patents Act 1977 . S.37 (1) provides machinery for determining who is entitled to a patent after it has been granted. It is generally regarded as the equivalent to s.8 which provides machinery for determining who is entitled to a patent application. However, one difference between s.37 and s.8 is that s.37 allows the question of whether any right in or under a patent should be transferred or granted to a third party to be determined by the comptroller. This case is about an attempt by one co-owner of a patent to use s.37 (1) to circumvent the rule in s.36 (3) that where two or more persons own a patent all of them must consent to a licence under the patent. The application had been brought because the joint owners of a patent had fallen out. The invention had not been a success. One of t...

The trial judge described this case as " very short to try and very hard to decide". The issues were whether the patent was valid and if so whether it had been infringed. Mr Justice Pumfrey concluded that the patent would have been infringed had it been invalid but in the event it was bad for obviousness. There was no new law in this case but a good illustration of how the court works with expert evidence.

On Friday I reported a speech by Commissioner Reding entitled " Opportunities and challenges of the Ubiquitous World and some words on Internet Governance" on the EC perspective on reform of the domain name system. The Commissioner made the not unreasonable point that it is undesirable for the government of one state to determine who can run the top level domain space of other states or, indeed, the generic top level domain. Mark A. Shiffrin, a lawyer and a former Connecticut state consumer protection commissioner, and Avi Silberschatz, a professor of computer science at Yale, express the contrary view in "Web of the Free", one of today's Op-Ed contributions to the New York Times . Those authors attack the Commissioner's position as "disingenuous" describing it as a "'maneuver' [presumably, manoeuvre] amount[ing] to a call for the United States to depend on the kindness of strangers in maintaining basic infrastructure that underpins ...

I have just come across a good Canadian IP blog by Sander Gelsing called " Now, why didn't I think of that? " According to his bio, Sander practises with Sisson Warren Sinclair in Red Deer, Alberta as a barrister and solicitor, patent and trade mark agent. Skimming through his blog the following took my fancy: Canadian and U.S. Patent Law Differences on 11 Oct 2005 (a good cross-reference - to my untrained English eyes Canadian patent law looks even more different than American law); Wyrd Trade-mark Lawsuit on 4 Oct 2005 about a claim by a Winnipeg folk group against Warner Brothers, Radiohead and Pulp for C$40 million and an order to prevent the latest Harry Potter movie from being shown in Canada (the comments are interesting too); and Patents curb Competition on 27 Sep 2005 about Eli Lilly & Co. and Apotex Inc on the interrelation between IP and competition. There is of course much, much more. I commend this site unhesitatingly.

I am indebted yet again to Stephen Nipper for drawing my attention to a new IP news site by the Australian Patent Information Centre in his post " New IP Kid on the Blawgk: Australian Patent Information Centre blog" on The Invent Blog . I have heard of "blogs" and even "blawgs" not I am not sure what a "Blawgk" is. The context suggests a space on the Internet for lawyers who write blogs about the law. Returning to the Australian site, the blurb says that it is brought by IP Organisers and IP Menu and that it will provide details of the latest Patent Office, Federal Court and High Court cases and IP news from Australia. "If it is Australian and has anything to do with patents, [we] will find it here." Its RSS feed is http://www.patentaustralia.com/atom.xml . IP Organisers offer intellectual property support to patent agents, lawyers and others including research, investigation, management, commercialization, auditing and discovery. IP ...

Microsoft has risen considerably in my esteem since I read in vnunet.com that its national technology officer Jerry Fishenden has criticized HMG's plans to introduce identity cards (see " Microsoft slams UK ID card database, Central database could lead to 'massive identity fraud "). According to the article Mr Fishenden described the government's current plans for a centralized database with lots of information on everyone as a mistake. He added that it could lead to massive identity fraud. Rather than centralizing, data should be dispersed. In Fishenden's words: "Any ID system needs only to keep information that is appropriate to a particular search in one location. That way you reduce the impact of loss or theft by decentralising the data." The article claims that the ICT experts the Home Office have been consulting have not really been speaking their minds and that his views are echoed by the BCS. I'll think twice before switching to Linux fo...

Rights in performances are pretty new in themselves in the UK. Although the Dramatic and Musical Performers Protection Act 1958 and previous legislation had made it an offence to record a performance without the performer's consent it was not until Ex p. Island Records Ltd . [1978] Ch 122 that performers were able to apply for injunctions to restrain such recording. Elevation of the right to consent or withhold consent to a performance to the status of an intellectual property right akin to copyright only came about on 1 Aug 1989 when Part II of the Copyright, Designs and Patents Act 1988 came into force. At first, those rights were quite limited as can be seen by comparing the original version Part II of the Act with what we have now . Most of the changes came about through with The Copyright and Related Rights Regulations 1996 and The Copyright and Related Rights Regulations 2003 which implemented various EC directives. Now Part II is to change yet again with the the provision o...

An issue that has attracted a disproportionate amount of attention is an alleged spat between Europe and the US the World Summit on the Information Society as to who should run the internet domain name system. In a speech delivered to the 2005 Summit of the Global Business Dialogue on electronic commerce on 17 Oct 2005 Viviane Reding, the Commissioner for the Information Society and the Media put the record straight. Emphasizing the impressive degree of consensus that already exists on most issues, she explained that the difference of opinion that is grabbing the headlines is the small but important question of who and how names and addresses are allocated on the internet. Traditionally, the US government has overseen these key functions and most agree that it has done a good job. However, it is no longer desirable for a single state to decide who should run every other country’s top level domain space rather than the governments of the countries. Nor is it desirable for a single sta...