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Major items of interest
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How to become a criminal by protecting your rights Patent office consults on changes to the Patents Act 1977 When is a copyright work "incidentally included"? A surprising set-back for Arsenal in the High Court Can a smell be registered as a trade mark? Proposed EU regulation to tackle counterfeiting and piracy Alicante Amsterdam Beijing Berlin Brussels Chicago Dusseldorf Frankfurt Hamburg Ho Chi Minh City Hong Kong London Milan Moscow Munich New York Paris Prague Rome Singapore Tokyo Warsaw Washington DC Associated offices: Budapest Vienna Zagreb Lovells’ intellectual property practice advises, in the Poland, Hungary, China, Hong Kong, Singapore, context of European Union, English, German, Indo-China (Vietnam, Cambodia and Laos) and French, Italian, Dutch, Polish, Czech, Slovak, Croatian, Russian, Chinese (PRC mainland andHong Kong), Singaporean, Vietnamese and We also offer a complete global domain name international law (including WTO issues), in relation protection service including clearance searches, to all areas of intellectual property: trade marks, registration, watch and investigation covering all patents, design rights, copyright, and rights arising generic TLDs (top level domains) but also, from IT, new technologies and the media such as the importantly, most country TLDs in some 200 press and Internet. We also advise our clients in the fields of entertainment and the arts. Many of ourlawyers have a scientific background, enhancing This newsletter is written in general terms and its their understanding of the technical and commercial application in specific circumstances will depend on We can help with litigation and alternative dispute For advice or information on our Intellectual resolution and with the negotiation and formation of commercial agreements. We carry out audits oftechnology and intellectual property rights for the purposes of investment and company flotations.
Burkhart Goebel (Hamburg)Winfried Tilmann (Dusseldorf) In protecting the intellectual property rights of our clients we act at all levels, from advising on, applying for, registering and enforcing rights through to devising strategies and the investigation of infringement and counterfeiting activities. In addition, we act in structuring, negotiating and drafting licences and technology transfer transactions and have considerable experience in IPdisputes before the Industrial Property Offices and With internationalisation of the world's market in IP litigation before the courts, especially in cross- place, intellectual property proprietors increasingly border or multi-jurisdictional disputes.
require advice on legal matters that involve manyjurisdictions. With our global spread and close Applications and registrations are not currently relationships with law firms and intellectual handled in all legal systems listed above. However, specialism in all jurisdictions Lovells provides a fully we offer a complete trade mark filing and integrated and seamless service on questions prosecution service at the Community Trade Mark affecting intellectual property in a cost effective and Office as well as trade mark, industrial design, appellations of origin and domain names searches,clearances, filing and prosecution services before the Please refer to the back of this newsletter for office national Industrial Property Offices in France, Germany, Czech Republic, Slovakia, Russia (togetherwith all other CIS member states), Croatia, The judge compared the two patents and stressed the importance of concentrating on the essential information in the two documents. Synthondisclosed a wide variety of methods of making crystalline paroxetine methanesulfonate. SKB'sdisclosure was equally wide, albeit it disclosed a Paroxetine is used in the treatment of depression readier way of making the crystals. He held that and other ailments. In Synthon BV v Smithkline this was not a case of anticipation by "inevitable Beecham plc1 Jacob J held that SKB's patent for result": Synthon first invented paroxetine paroxetine methanesulfonate was anticipated by methanesulfonate and sufficient information was Synthon's earlier patent application. Synthon's given in their patent to enable the skilled man to application was filed but not published before the make it. SKB's patent was invalid for anticipation.
Unpublished patent applications can be used as thebasis of a novelty attack under section 2(3) PatentsAct 1977. This provides that the state of the art(matter available to the public by which the novelty of the invention is judged) includes matter containedin an application for another patent which was In our August 2002 issue, we reported on Intel Corp published on or after the priority date of the v VIA Technologies Inc, where the English High invention, provided that (a) the matter was Court reviewed the relationship between the contained in the earlier application as filed and as assertion of intellectual property rights and anti- published; and (b) the priority date of the earlier competitive behaviour. That decision has now been patent is earlier than that of the invention. It is worth noting that earlier, unpublished, applicationsare excluded from the state of the art for The computer chip manufacturer, Intel Corporation, obviousness. The Synthon application could only had sued the processor and chip-set manufacturer, have been used in an obviousness attack if it had VIA Technologies Inc, for infringement of patents actually been published before the SKB priority relating to micro-processors and the "chip-sets" which connect a micro-processor to the computermotherboard. As part of its defence, VIA alleged The court had to decide whether the SKB invention that various of Intel's licensing practices and the was new, having regard to the Synthon disclosure.
bringing of the patent action itself were anti- To anticipate a patent, the prior art publication competitive and that, as a result, Intel could not (interpreted as at its date of publication) must enforce its patent rights against VIA. These contain clear, unmistakable directions to the arguments were based on Articles 81 and 82 of the patentee's invention or the inevitable result of Treaty of Rome, which prohibit certain anti- carrying out what is described in the prior art would competitive agreements and abuses of dominant fall within the scope of the patentee's claim.
2. Intel Corp v VIA Technologies Inc, unreported, 20 December Intel obtained summary judgment against VIA, ie there could be no infringement, because a key immediate judgment on the basis that the defendant feature of the patent claim - the host computer - was had no real prospect of successfully defending the not located in the UK but in Antigua.
Jacob J at first instance was asked to give a ruling on The Court of Appeal overturned the first instance decision, ruling that there was sufficient merit ineach of the Euro Defence arguments for them to be "Is it a defence to the claim under section 60(2) of decided at full trial, rather than dismissed at the the Patent Act 1977, if otherwise good, that the host summary judgment stage. The "Euro Defence" may computer claimed in the patent in suit is not present in the UK, but is connected to the rest of theapparatus claimed in the patent" The emphatic answer from Jacob J was that this wasno defence. The test under s 60(2) was whether the"…effect of the invention…" was within the UK.
Bookies back a loser - Part II The fact that William Hill's punters could play the system in the UK meant the "effect of the invention" In our April 2002 issue, we reported on Menashe was in the UK and the location of the "host Business Mercantile Ltd v William Hill Organisation, computer" element outside the UK was irrelevant. a rare decision of the English High Court onbusiness method patents. Jacob J ruled3 that, by Aldous LJ, giving the lead judgment in the Court of locating a "host computer" outside the UK, the Appeal, agreed that William Hill did not escape liability by locating the "host computer" element in infringement of an on-line gaming patent. William Antigua. However, he rejected the reasoning of Hill appealed and on 28 November 20024, the Jacob J that the test was whether the "… effect of Court of Appeal upheld the first instance decision, the invention …" was in the UK. As a matter of statutory interpretation, Aldous LJ took the viewthat section 60(2) required the "invention" to be put Menashe owned a European Patent (UK) relating to into effect in the UK, not merely for the "effect" to a system which, to be infringed, required a system occur in the UK. Where the claimed invention was containing, amongst other elements, a "host to an apparatus, the apparatus had to be effective in computer" (in this case a computer operated by William Hill) and a "terminal computer" (the enduser's computer). This is a common form of claim At first sight, Aldous LJ's test appears to impose a for patents which involve systems operating over the higher threshold than that of Jacob J. However, the application of the test appears to be more generousto the patentee. The Court of Appeal stated that To use William Hill's system, customers had to "… it would be wrong to apply the old ideas of obtain a copy of a computer program from William location to inventions of the type under Hill, either by downloading it from the Internet or consideration in this case". Aldous LJ went on to by obtaining a CD-ROM from William Hill.
ask where the gaming system was used. In his view, Menashe alleged that this program turned the it was used in the UK despite the fact that the "host punter's computer into a "terminal computer" within computer" element was physically located outside the meaning of the patent, so the supply of this the UK. The physical location did not matter - what program amounted to infringement under s 60(2) mattered was the input and output of the host Patents Act 1977, as it constituted the supply of computer. His view was that in a "real sense the "…an essential element of the invention, for putting punter uses the host computer in the United the invention into effect". William Hill argued that Kingdom even though it is situated in and operates in 3. unreported, 15 March 20024. unreported Antigua". This was enough to allow him to deny the Section 23 must be read in conjunction with the offshore location of the host computer as a defence. "secrecy directions provisions" in s 22. These enablethe Comptroller to give directions prohibiting or The decision appealed against was a preliminary restricting publication of information in a patent point and does not dispose of the case. It remains application which could prejudice the defence of the to be seen whether the case will now proceed to trial and give some guidance as to the PatentsCourt's view of such "business method" patents.
The Official Secrets Act 1911 contains otherrestrictions in relation to inventions of a "militarynature". It is a crime to communicate directly or indirectly to any foreign power, or in any othermanner prejudicial to the State's safety or interests,any "sketch, plan, model, article, note document or information which relates to munitions of war". This There are enough people in our prisons without "I wouldn't do that if I were you." Clients are filling them with inventors and patent attorneys.
sometimes surprised to be told that they are on theverge of criminal activity. What have they done -carried out a bank robbery or murder perhaps? No - they have just filed a patent application. Not anypatent application, but if the person filing theapplication is a UK resident and files first abroad he could end up with two years in prison. Dusty old section 23 of the UK Patents Act, although no doubtinfringed from time to time, has not in practice attracted much attention from the police. Butperhaps things are to change.
The EU Directive on the patenting ofbiotechnological inventions5 should have been The Patent Office has issued a reminder on its implemented into the various national laws of the website about the provisions of section 23, which European Union by 30 July 2000. However, to makes it a criminal offence for anyone resident in date, only Denmark, Finland, Greece, Ireland, Spain the UK to apply in another country for a patent for the UK have complied with this obligation. The any invention without permission from the European Commission has now issued "reasoned opinions", requiring the recalcitrant countries (i) he has first applied for a patent for the same (Austria, Belgium, France, Germany, Italy, Luxembourg, the Netherlands, Portugal andSweden) to implement the Directive.
(ii) six weeks have elapsed since the date of this This is the second stage of formal infringement (iii)there are no "secrecy directions" in force (see Commission sent all offending countries a letter offormal notice in November 2000. Any country Section 23 is designed to give the Government the chance to inspect patent applications before satisfactorily within two months may find itself publication in order to identify any inventions that before the European Court of Justice.
could be relevant to public security or defence.
Given the fears of terrorism and the difficulties in Iraq, this has suddenly become topical.
months and is much less formal than court requirement for expert evidence, disclosure orlengthy documentation. Despite the lower costs and less formal nature of an action before theComptroller, infringement proceedings have The UK Patent Office has issued a consultation paper, setting out proposals to amend the Patents The Patent Office considers that infringement Act 1977 ("the Act") to reflect the recently revised proceedings will normally be brought before the European Patent Convention, "EPC 2000", which Patents Court or the Patents County Court due was adopted by the European Patent Office's Administrative Council on 28 June 2001. The Patent Office is also using this opportunity to proceedings should go before the Comptroller consult about other changes and clarifications to the be removed, in order to increase access to the Act which do not directly flow from the EPC.
Many of the changes will have no significant effect (b) Threats
on the operation of the Act, for example the If a Patentee makes a threat of infringement conditions for patentability will be amplified to proceedings for selling or stocking a product stress that patents will be available for inventions "in which turns out to be groundless the defendant all fields of technology". Others have wider implications. For example, Article 54(4) EPC damages. The Patentee only has a defence if currently states that European applications infringement is actually proven. Consequently published after the date of filing of a later even if the Patentee reasonably believes there is application would only anticipate that later infringement he is limited to simple notification application in respect of Contracting States which were designated on both applications. After therevisions applications will be deemed to designate all These provisions may restrict a Patentee from states even if subsequently registrations in certain fully engaging in pre-action discussion aimed at states are not maintained. The "state of the art" will resolving the issue without ligitation and as such are at odds with Woolf's attitude to litigation.
The Patent Office is consulting on whether theprovisions in the Act dealing with "threats" of The Government seeks views on a number of other infringement proceedings discourage or restrict genuine and meaningful attempts at pre-litigation settlement.
(a) Litigation
(c) Inventor/ Employer
At present, the Comptroller has jurisdiction tohear infringement proceedings although he does Are the rules under which an employee, whose not have the power to grant injunctions or invention has been of "outstanding benefit" to orders for delivery up/destruction or accounts of the employer, can seek compensation from the profits and he is limited to awarding damages employer, weighted too heavily in favour of the and declarations that the patent is in force and infringed. In addition a proprietor can only (d) Co-owners
launch infringement proceedings before theComptroller if the alleged infringer agrees. Do the rules dealing with co-ownership of apatent require clarification? The procedure is similar to that before thecourts in that it involves the exchange of witnessstatements and cross examination of witnesses inthe hearing. The procedure should take about 9 (e) Amendment
Should it be possible to amend a patent in anyproceedings in which validity may be put in issuerather than only where validity "is put in issue"as at present? (f) Re-examination
Should the Patent Office be allowed to re-examine a patent post-grant? (g) Inventors' names
Should inventors be allowed to request that theirnames be kept out of the public domain? The consultation paper is available on the PatentOffice's website (http://www.patent.gov.uk).
Responses are required by 21 February 2003. claimant was entitled to a final injunction restraining A recent decision has given the High Court a rarechance to consider the meaning of "incidentalinclusion" of copyright material. The Football Association Premier League had granted an exclusivelicence to a company (Topps Ltd) to produce stickers and an album of pictures of Premier Leagueplayers. A rival sticker producer, Panini UK Ltd, In November, the Copyright (Visually Impaired brought out an album containing stickers of football Persons) Act 2002 received Royal Assent. The Act players in their current kit. The Premier League, inserts into the Copyright Designs and Patents Act with Topps and various Premier League clubs, sued 1988 provisions by which certain works covered by for copyright infringement and sought an injunction copyright can be converted into formats accessible restraining it from reproducing all or a substantial to blind and partially sighted people without part of the Premier League's lion logo, or any club infringing that copyright. Such individuals will be able to make a single copy of the work for theirpersonal use. Certain approved bodies, for example In its defence, Panini argued that the inclusion of educational establishments, will be able to make the various logos in its sticker album was incidental multiple copies for the visually impaired, provided and that, pursuant to s 31(1) of the Copyright, that they do not profit financially by so doing.
Designs and Patents Act 1988, copyright in the logoswas not infringed.
Certain conditions apply to the exercise of the right,for example that the copy of the work from which The court held that6, in some cases, the test for an accessible version is made is a lawful copy and whether or not the inclusion of a copyright work in that there are not already on the market copies of a another artistic work was "incidental" would involve work in a format accessible to the visually impaired.
an element of subjectivity. In this case it was The right does not apply to all types of works accepted by both parties that what consumers valued covered by copyright; for example it does not apply in an annual sticker album was current photographs of the players (in action if possible) wearing theircurrent kit. The judge held that the inclusion of the Current expectations are that the Act will be logos was self-evidently not incidental, but was an integral part of the artistic work comprised of thephotograph of the footballer in his present-day kit.
The intent behind Panini's use of the logos was toshow footballers as they played now. There hadtherefore been copyright infringement and the 5. What is meant in Article 7(5) by the expression 'insubstantial parts of the database'? In (a) does 'substantial' mean something more than (b) does 'insubstantial' part simply mean that it is introduced "database rights" to protect the investment involved in creating and maintainingcomputerised collections of data. As we explained 6. Is 'extraction' in Article 7 limited to the transfer in our September 2001 issue, in British Horseracing of the contents of the database directly from the Board Ltd v William Hill8, the UK Court of Appeal database to another medium, or does it include asked the European Court of Justice ("ECJ") for a the transfer of works, data or other materials preliminary ruling on a number of issues involving derived indirectly from the database, without the interpretation of the Directive. The case there being any direct access to the database? concerned the extent to which the claimants could 7. Is 'reutilisation' in Article 7 limited to the making prevent the defendants from using, in a new part of available to the public of the contents of the their business on the Internet, data which had been database directly from the database, or does it derived indirectly from the claimants' database. In also include the making available to the public of the High Court, Laddie J had ruled that the works, data or other materials derived indirectly database right protected against unlicensed taking from the database, without there being any The questions addressed to the ECJ have now beenpublished9 and are as follows: 8. Is 'reutilisation' in Article 7 limited to the first making available to the public of the contents of (a) 'substantial part of the contents of the 9. In Article 7(5), what is meant by 'acts which conflict with a normal exploitation of that (b) 'insubstantial parts of the contents of the legitimate interests of the maker of thedatabase'? (and could the activities in BHB v in Article 7 of the Directive include works, data William Hill (above) amount to such acts?) or other materials derived from the database, butwhich do not have the same systematic or 10. Does Article 10(3) mean that, whenever there is a 'substantial change' to the contents of a accessibility to be found in the database? database, qualifying the resulting database for itsown term of protection, the resulting database 2. What is meant by 'obtaining' in Article 7(l)? must be considered to be a new, separate database, 3. Is 'verification' in Article 7(1) limited to ensuring including for the purposes of Article 7(5)? from time to time that information contained in The outcome of this case will be of great interest as it will be the first time the ECJ has clarified the nature and extent of the new sui generis right created by the Database Directive. TheDirective itself requires the Commission to (a) 'a substantial part, evaluated qualitatively produce a report on the way that the right is being applied, every three years after the coming (b) 'a substantial part, evaluated quantitatively 7. (96/9/EC)8. (Case 203/02)9. Official Journal, 27 July 2002 had made findings of fact and had therefore not only exceeded its jurisdiction but had also come to a conclusion which was inconsistent with the findingsof the national court. In our previous issue, we reported on the answers of Laddie J pointed out that it was established law that, the European Court of Justice to the questions in considering references from a national court, referred to it by Laddie J in the long-running unlike when it is considering appeals from lower dispute between Arsenal Football Club and Matthew courts, the ECJ has no jurisdiction to make findings Reed, a trader in football souvenirs branded with of fact, as it is not exercising a normal appellate function. He then considered the ECJ's judgmentand concluded that not only had the Court made The questions related to the issue of trade mark use findings of fact, but that they were inconsistent with and the judge had asked first, whether it would be a those that were reached at trial. As such, he did not defence to trade mark infringement if the use of the consider himself bound by the ECJ's decision and identical sign did not indicate trade origin.
decided that he had to apply the law to the facts as Secondly, if the use did not establish any such connection in trade between the trade markproprietor and the goods, would the fact that use of The judge commented that, despite appearances to the sign on the goods could be seen as badges of the contrary, this was a very unattractive outcome support, loyalty or affiliation to the proprietor, for all the parties. However, the court could not Arsenal, be sufficient to establish such a connection? cede to the ECJ a jurisdiction that it did not have.
Although the judge could, as suggested by Arsenal's The ECJ in its judgment indicated that Mr Reed's counsel, make another reference to the ECJ, this did use of the "Arsenal" sign had established a connection in trade between the goods and the trade circumstances, Laddie J decided that the best course mark proprietor and that this affected the guarantee would be to apply the ECJ's guidance on the law to of origin. As such, whether they could also be the findings of fact made by the High Court. He viewed as badges of support, loyalty or affiliation reviewed the ECJ's judgment and stated that it had was immaterial. On that basis, when the judgment held that, where the defendant's use of a mark was was handed down, it was widely assumed that Mr not intended by him, or by the public, to be a Reed's goods must have infringed Arsenal's trade marks and that, when the matter was referred back infringement, as the essential function of the trade to Laddie J in the English High Court, he would mark was not affected. On that basis, he found for apply the law according to the interpretation presented by the ECJ and rule in favour of Arsenal. As we pointed out previously, and as the judge Not so. In the hearing before Laddie J, Mr Reed concluded in the final paragraph of his judgment, submitted that the ECJ, in advising on the correct there will undoubtedly be further appeals.
interpretation of the EC Trade Marks Directive10, Presumably, Arsenal will now appeal to the Court of Given this decision, it is difficult to see how one Appeal which, unlike the ECJ, will be in a position could in practice file a successful application to to consider both submissions as to the High Court register a "smell" mark in any EU Member State.
judge's findings of fact and on the correct Until a sufficiently objective means of representing a construction of the law. The Court is unlikely to be smell and a method of accessing a public register in a position to hear the matter before the middle of containing that representation are devised this is next year so, for the moment, the apparent inconsistency between Laddie J's interpretation ofthe law and that of the ECJ will stand. Can a smell be registered asa trade mark? UK law on the registrability of shape markscontinues to develop, in the light of a recent The EU Trade Marks Directive (see above) extended judgment11 of Jacob J in Société de Produits Nestlé the range of things potentially capable of being SA v Unilever plc. The judge held that the shape registered as trade marks. The Directive specifically marks for Viennetta ice cream could not be mentioned designs and shapes. Many people also registered as UK trade marks because they lacked thought it would allow smells and sounds to be any "distinctive character".
registered. However, as a recent decision of the ECJillustrates, theory cannot always easily be put into Viennetta is a layered ice cream dessert product, sold by Unilever under the Walls brand. Viennettawas launched in 1982 and became a huge success The applicant, Ralf Sieckmann, applied to register and different variants of the original product were with the German patent and trade mark office an subsequently introduced, using different flavours of "olfactory mark". The mark was described as "the ice cream and types of chocolate. In 1994 Unilever pure chemical substance methyl cinnamate" with applied in the UK to register the 3D shape of formula "C6H5-CH = CHCOOCH3". The Viennetta. Two trade mark applications were filed, applicant provided a sample in a container, also one for the original Vienetta ice-cream product with describing the scent as "balsamically fruity with a a dark chocolate topping ("dark mark") and a second slight hint of cinnamon". Registration was refused with a white chocolate topping ("white mark").
Nestlé argued that the Viennetta shape marks should The Bundespatentgericht sought guidance from the not be registered because they fell within some of European Court on whether such a sign could the absolute grounds for refusal of registration in constitute a trade mark. The ECJ has now given its Article 3 of the EU Trade Marks Directive (whose decision . While the court accepted that a smell equivalent in the UK is section 3 Trade Marks Act, could, in legal theory, be registered as a trade mark, 1994). The main point at issue was whether the it went on to hold that the key registration marks were "devoid of distinctive character" (Art requirement of "graphic representability" was not 3(1)(b)). If a mark is devoid of distinctive character met by attempts to define the mark by chemical then it cannot be registered. However, this formulae, written descriptions, depositing a physical exception can be overcome if the applicant can example of the smell at a trade mark office or any show that, prior to the application for the trade mark, the mark has acquired "distinctiveness"through use. (Art 3(3)).
Unilever conducted a poll of the "dark mark" one could assume virtually identical public reaction product to see if people recognised the shape of the to the mark, then one could assume that a poll Viennetta ice cream as being a Viennetta product.
about one mark was as good as a poll about the From the results of the poll, Jacob J decided that the ice cream product appearance had achievedconsiderable recognition on its own, thus denoting Walls Viennetta. The question was whether that wasenough to give the mark a "distinctive character".
The judge did not believe that it had been provedthat any member of the public would rely on the appearance alone to identify the goods; they recognised it but did treat it as a trade mark. On 12 November 2003, Advocate General Leger delivered his opinion in Libertel Groep BV v "it must be proved that consumers regard the Benelux-Merkenbureau12. The case involves the shape as a badge of trade origin in the sense that registration of a colour per se as a trade mark.
they would rely on the shape alone as anindication of the trade origin, particularly to buy Essentially, the Advocate General found that colours the goods. If that cannot be proved, then the per se (without shape or borders) do not qualify for shape is not properly a trade mark, it does not registration under Article 2 of the Trade Marks have "distinctive character" for the purposes of Directive (see above) as they are neither (i) capable of being graphically represented, nor (ii) capable ofdistinguishing the goods or services of one Jacob J therefore refused registration on two undertaking from another for the following reasons.
(i) Colours with neither shape nor border are not 1. The shape lacked distinctive character because capable of being represented graphically as: although public recognition of the shape as that • the examiner cannot ascertain whether the of a particular trader had been established, it had mark is to be used as a trade mark or in an not been shown that the trader had used the shape to denote trade origin or that the public application until he knows how the sign will relied upon the shape to denote trade origin; determine the way in which and the shades misattributed or did not recognise the product, colour concerned for identical or similar character through use, because a minor but nonetheless significant proportion of the public (ii) Colours are not distinctive because: would take other shapes in use by other tradersas the shape mark applied for. • the application for a single colour mark does not indicate how the sign will in fact appearon products - the examiner needs this In addition, the judge held that, if one mark had acquired distinctiveness through use, a variant ofthat mark could not piggy-back its way to • a colour may not have per se the function of distinctiveness. On that basis, the results of the poll indicating the origin of products or services, for Unilever's "dark mark" could not be applied to as it should "guarantee the origin of a Unilever's "white mark". However, if there was a product enabling the consumer to distinguish case where the difference between the mark as used it, without confusion, from a product having and that sought to be registered was so trivial that a different origin"13. A single colour may therefore, the trade mark was not to be considered therefore not clearly indicate origin without These two cases (see also Viking-Umwelttechnik Gmbh v OHIM in our October 2002 issue) indicate Community Trade Marks Office had registered a a move towards a restrictive interpretation over the number of colours per se as trade marks (eg lilac for registration of colours per se as trade marks, except chocolate, magenta for telecoms) on the basis that in very rare cases. It will be interesting to see if the they had acquired a secondary meaning. However, ECJ confirms this restrictive interpretation. such registrations were questionable as it was notthe colour per se which had acquired distinctiveness but the combination of the colour with otherelements as logos or words. If such other elementswere omitted, consumers would not be able torecognise with certainty the product's origin. Finally, the Advocate General concluded that thelimitation on the use of colours, which would follow The ECJ has recently handed down an important from their being monopolised by trade mark rights, decision on the protection of well-known marks.
would have a negative impact on free competition Under Article 5(1)(b) Trade Marks Directive, a trade within the EU.14 In any event, there were other mark proprietor can prevent a third party from laws, eg unfair competition, which could protect using (without his consent) any sign identical or against unfair conduct without creating monopolies similar to his registered trade mark, for identical or similar goods to those covered in the registration, ifthere exists a likelihood of confusion on the part of On 9 October 2002 the Court of First Instance of the ECJ, in another judgment involving orange, saidthat colours per se could in theory be registered, Article 5(2) deals with trade marks with a provided the sign was distinctive under Article "reputation" in an EU Member State, ie "well- 7(1)(b) Community Trade Mark Regulation15. In known" marks. It enables a proprietor of a well- KWS Saat AG v OHIM16, a shade of orange was held known mark to attack a sign that is identical or to be devoid of distinctive character in relation to similar to its mark, even though the goods or agricultural products and machinery as being services of the later mark are not similar. There is commonplace and not unusual in that field. Rather no need to show any confusion between the two than enabling the relevant public to distinguish immediately and with certainty the applicant'sproducts from ones with a different commercial But what if the later mark is identical or similar but origin, the colour would be regarded as a mere the goods/services it covers are similar to those covered by a well-known mark? The ECJ has nowconfirmed in Davidoff et Cle SA v Gofkid Ltd17 that Curiously, the Court found that, as regards services, Article 5(2) also applies in that situation. Were it a colour did not attach to a service itself, nor did it give it any substantive value. Therefore, the protection if the later mark was used for similar relevant public could distinguish between use of a goods or services than if it was being used for shade of orange as a mere decoration and its use as an indication of origin of the service, even in theabsence of any words. In relation to services, Davidoff is the registered proprietor of the trade 13. Para. 14 Hag GF decision, C-10/89; PARA. 28 Canon decision.
mark DAVIDOFF, which is registered internationally 14. cf Art. 16 of Italian Trade mark law (n.929/1942), which expressly includes only chromatic combinations or particular (including in Germany) and used for luxury cosmetics, tobacco, leather and other goods. Gofkid obtained under Article 5(1) of the Directive so that owns the word and device mark DURFFEE which is it was not necessary to seek it under Article 5(2)? registered in Germany. The DURFFEE mark wasregistered after the DAVIDOFF mark. Gofkid The protection conferred under Article 5(1)(a) is an distributes goods made from precious metals, absolute right but the application of Article 5(1)(b) including ashtrays and cigar/cigarette cases and depends on there being a likelihood of confusion.
Accordingly, where there is no likelihood ofconfusion, Article 5(1)(b) cannot be relied upon by Davidoff bought proceedings against Gofkid in the proprietor of a well-known mark to protect Germany, seeking (i) an order that it stop using the himself against impairment of the distinctive DURFFEE mark and (ii) annulment of the mark.
character or repute of the mark. In those Davidoff argued that there was a likelihood of circumstances the answer must be that Article 5(2) confusion between the DURFFEE mark and the of the Directive is to be interpreted as entitling the DAVIDOFF mark because Gofkid used the same Member States to provide specific protection for script and the letters "D" and "ff" in the same well-known registered trade marks in cases where a distinctive manner as the DAVIDOFF mark.
later identical or similar mark or sign was used for Davidoff alleged that the DURFFEE mark was goods or services identical with or similar to those deliberately designed to take advantage of the high prestige value of the DAVIDOFF mark and that useof the DURFFEE mark was detrimental to the goodreputation of the DAVIDOFF mark.
Gofkid asked for the action to be dismissed arguingthat there was no likelihood of confusion betweenthe two marks, or a possibility of appropriation of The ECJ held that Article 5(2) gives stronger Mystery Drinks GmbH applied to register as a protection to well-known marks than that conferred Community Trade Mark the word "MYSTERY" for on marks under Article 5(1), since the proprietor goods including snacks, sugar products and non- can prevent the use of an identical or similar sign alcoholic drinks. The application was opposed by for goods or services which are not similar to those Karlsberg Brauerei KG Weber, which owns an in respect of which the mark is registered. This earlier German trade mark registration for MIXERY stronger protection is given when the use of a sign for beers and drinks containing beer. The without due cause takes unfair advantage of, or is opposition was based on the likelihood of confusion detrimental to, the distinctive character of a well- between the CTM application and KB's earlier known mark. There is thus specific protection against impairment of the distinctive character orrepute of the marks in question. The applicant argued that the trade mark MIXERYshould only enjoy limited protection as it was hardly The question therefore arose whether the wording distinctive for the class of goods. It submitted that of Article 5(2) precluded its application also where a the relevant public associated the trade mark sign was used for identical or similar goods or MIXERY with words like mixing, to mix, mixture, services, given that Article 5(2) refers expressly only which indicated that the beverage was a mixture or to the use of a sign for non-similar goods or services. Could protection of a well-known markagainst the use of a sign for identical or similar The applicant contended that the marks were goods or services which is detrimental to the strikingly different, when compared phonetically.
distinctive character or repute of the mark be Equally, it argued, they differed visually: the centralletters "IX" and "YST" differed and the initial "M" of MYSTERY was in a very stylised form.
was sufficient to give rise to a likelihood of Furthermore, the relevant products differed: non- alcoholic drinks were not manufactured at the samesites as beer and were sold in separate areas in ashop. Another crucial distinction for consumers, particularly drivers and minors, was whether a drinkcontained alcohol. In conclusion the applicantmaintained that there was no likelihood ofconfusion between the MYSTERY and MIXERY The court held that the relevant public by reference Victoria Beckham has abandoned her fight to to which the likelihood of confusion must be monopolise the "Posh" nickname. Peterborough assessed comprised average consumers in Germany.
United football club had applied to register as a On this basis, the court had to compare first the trade mark "The Posh", a nickname which the club goods and then the signs when deciding whether had used since the 1920s. Ms Beckham, whose registration of the sign MYSTERY could give rise to nickname has been "Posh Spice" or simply "Posh" the likelihood of confusion with the mark MIXERY. since the time she sang with the Spice Girls, lodgedan opposition. She contended that the name Posh The court concluded that the goods covered by the was "inexorably associated with Victoria Beckham in mark and sign were similar. However, visually, the the public's mind" throughout the world. However, two could be readily distinguished by their graphic she has now withdrawn her opposition.
form, even though orally, they were phoneticallysimilar. The differences submitted by the applicantin relation to the pronunciation of the word only worked on a fragmented analysis, syllable by syllableas opposed to comparing the pronunciation of theword as a whole. As regards the conceptual comparison, the court held that the relevant public would not carry out a detailed analysis to findconceptual differences between the signs.
Nestlé has lost its attempt to register the phrase The court did not accept the applicant's argument "Have a Break" as a trade mark in the UK for that the relevant German public would immediately associate "MIXERY" with "mixed beverages". Theapplicant had argued that the scope of protection of Nestlé already has a registered trade mark for "Have the earlier right was substantially reduced due to its a Break, Have a Kit Kat". However, Rimer J rather descriptive and allusive character, which had upheld an opposition by rival giant, Mars, against to be taken into account when judging the registration of "Have a Break". He ruled that the likelihood of confusion between the marks. The phrase was "devoid of any distinctive character" and court pointed out that a likelihood of confusion therefore lacked inherent distinctiveness for the could be established in this case irrespective of the purposes of section 3(1) of the Trade Marks Act degree of inherent distinctiveness of the opposing 1994. He rejected Nestlé's argument that the mark mark "MIXERY". According to the court, that had acquired a distinctive character through pre- conclusion could not be invalidated by the applicant's argument that the visual impression wasof primary importance with regard to those beverages. The court emphasised that the goods atissue were also consumed after being ordered orallyand that the phonetical similarity between the signs the EU. All Member States would, for example, have to grant competent authorities the power to impose interim injunctions and other measures toprevent unlawful goods from crossing EU borders.
Anyone involved, even innocently, in themanufacture, distribution or use of infringing items On 20 January 2003, the European Commission would be obliged to provide certain information to published its proposed Council Regulation setting help the rights holders identify the source of the out new rules concerning the actions of customs authorities against counterfeit and pirated goods andgoods infringing certain intellectual property rights. Under the proposal, collecting societies, in addition According to the Commission, between 1998 and to the rights holders or their licensees, would have 2001 the number of items infringing an intellectual the right to take enforcement action.
property right intercepted by customs at the EU'sexternal frontiers increased from 10 million to 100 The basic principles of the existing legislation will million items. In particular, there have been large remain, but the proposed Regulation sets out a increases in seizures of counterfeit foodstuffs, which were up almost 75% on the year before, and the types of goods that can be seized will be seizures of pirated or counterfeit CDs, which were increased to cover goods which infringe plant up 15,300% on 1999. With this new Regulation the variety rights, geographical designations or Commission is seeking to improve and harmonise indications of origin (for example, "Parma customs action in tackling such intellectual property rights holders will no longer be charged a fee Under the present legislation18, where fraudulent to make an application for action by a customs goods are suspected, rights holders are able to apply authority to seize infringing goods (but the directly to the competent customs authority to rights holders will have to give an undertaking prevent the goods from being released or to have assuming liability in the event that there is them detained. The customs authority decides whether the application is admissible and, if so, customs authorities will have more scope to suspends the release of the goods or detains them.
seize goods of their own accord (that is, The applicant must then successfully apply for a without the need for a prior application for ruling that the goods are illegal before they can be rights holders will have the option of having The proposed Regulation would harmonise the fraudulent goods destroyed with the agreement means of enforcing IP rights across the European of the person holding or declaring the goods, administrative cooperation and the exchange of information between the various authorities across goods found in a traveller's personal baggage within the limits of the duty-free allowance willbe covered by the new Regulation where suchgoods are suspected to be part of a larger-scale "Amendments to the Federal Law of the RussianFederation on Trade marks, Service Marks and Names of the Points (Countries) of Origin of the Goods" was published in the "Rossiskaya Gazeta",after being approved by President Putin. The Lawcame into force on 27 December 2002. The array of changes, which include legal definitions of what constitutes a counterfeit to provisions that require pirates to compensate trade mark ownersand to destroy counterfeit goods at their ownexpense, are expected to become key to Russia's war A circular issued by the China Internet Network on piracy and its bid to join the World Trade Information Center on 12 December 2002 has Organisation. The recent reforms also outline new confirmed that second level domain names (that is, protections to reduce unfair competition and trade "domainname.cn") will become available for mark registrations made in bad faith, as well as detailing punishments for violating the law. TheLaw is being brought into compliance with the A 'sunrise period', when owners of third level .cn Constitution, Civil and Criminal Codes of the domain names (<domainname.com.cn>) and Russian Federation, as well as international treaties owners of well-known trade marks can pre-book second level domain names corresponding to theircurrent third level domains or their well-known trade marks, started on 6 January 2003. Thesunrise period ends on 28 February 2003. Inpractice, it is most likely that the sunrise period willbe of use only to current holders of third level .cn domains, since trade marks can be declared to be'well-known' only as a result of a dispute broughtbefore the People's Courts. Second level domain names will become generallyavailable to the public for registration from 17March 2003 (by which time the CNIC will haveprocessed all priority applications). For furtherinformation regarding .cn domain names, pleasecontact Gabriela Kennedy in our Hong Kong office([email protected])

Source: http://www.copat.de/markenformen/eugh-kom/lovells.pdf