For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 26 February 2015

Warner-Lambert v Actavis Mark 3: a "lyrical" solution to a painful patent dispute

On 21 January fellow Kat Darren posted "No pain for Actavis - Warner-Lambert fail to stop launch of generic pregabalin" (here).  This blogpost reported the Patents Court ruling of Mr Justice Arnold in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat). In short, Warner-Lambert (part of the Pfizer group) had a patent for pregabalin, which it sold as a treatment for epilepsy, generalised anxiety disorder ("GAD") and neuropathic pain under the romantic-sounding trade mark LYRICA. While the original product patent expired, leaving competitors free to make and sell their own pregabalin, Warner- Lambert received a "second medical use" patent claiming the use of pregabalin or a pharmaceutically acceptable salt of it for the preparation of a pharmaceutical composition for treating pain, and use according to Claim 1 where the pain for which it is prescribed is neuropathic pain. A generic pharmaceutical company marketing pregabalin for that purpose (but for no other) would infringe this indication.

What normally happens here is that the generic company can launch a product with a "skinny label", this being edited product leaflet that mentions only the permitted indications. However, in reality, since prescriptions do not mention the indication for which a drug is prescribed, neither a pharmacist nor a generic manufacturer will know the reason why pregabalin was prescribed. This poses huge practical problems for Warner-Lambert when pondering how best to enforce its patent rights. Refusing interim injunctive relief, Arnold J noted:
" ... the best solution to the problem which arises in this case is to try to ensure that prescribing doctors prescribe pregabalin for the treatment of pain by reference to the brand name Lyrica rather than by reference to the generic name pregabalin. That will ensure that pharmacists only dispense Lyrica when presented with prescriptions for pregabalin which are (at least so far as the prescriber is concerned) for pain without requiring the pharmacist to know the indication for which pregabalin has been prescribed.
The parties were back in court again pretty soon, as Darren's follow-up post explains. In "Warner-Lambert v Actavis Mark 2, still at first instance: more on Swiss claims, Skinny Labels, and no Strikeout" (here), posted on Friday 6 February. This time, at [2015] EWHC 223 (Pat), Actavis sought to strike out Warner-Lambert's action while Warner-Lambert applied to amend its particulars to as to plead a case of subjective intention.  Arnold J refused to strike out the infringement action and to allow amendment of the particulars of claim in what he described as a "developing area of the law".

Today's news was broken to this Kat by a couple of comments posted by anonymous readers.  One read
"Today was the showstopper! Pfizer sought and got a High Court Order against the NHS [that's the National Health Service] requiring it to issue central guidance that when pregabalin is prescribed for pain the prescription must say LYRICA. This is a big first in the enforcement of a second medical use patent. Very innovative Court application by Pfizer based on the NHS being an intermediary or conduit and relying on jurisprudence from trade mark and ISP cases eg Cartier [this being another Arnold J decision, extending relief through blocking injunctions against ISPs from copyright infringements to trade mark infringements: judgment here, Eleonora's Katpost here]. So, there will be no pain for anyone now- the position is clear and simple!"
Another said:
"After today the IPKat can change its headline " Pfizer gets the best pain relief imaginable" - an Order from the High Court that NHSE must issue central guidance that prescribers must prescribe LYRICA when using pregabalin for pain and for those prescriptions pharmacists must dispense LYRICA. That's a super neat solution and is far better than any preliminary injunction against one or more generics. Pretty impressive strategy by Pfizer!"
Darren will surely be adding to this topic when the opportunity arises.

BREAKING NEWS: CJEU says that Member States are free to determine who must pay droit de suite royalty

Copyright has increasingly become linked to de-materialisation of both works and their exploitation channels, so it is kind of re-assuring to find cases that are still about the analogue world. 

This morning the Court of Justice of the European Union (CJEU) issued in fact its decision [not yet available on the Curia website] in Case C-41/14 Christie's France, a reference for a preliminary ruling from France seeking clarification as regards that peculiar creature of EU copyright known as artist's resale right, or droit de suite [Merpel explains that this phrase does not mean right to a (hotel) suite, but rather the "right to follow" the sale of one's own artwork] within Directive 2001/84/EC (the Resale Right Directive)

As this very blog reported a few months ago, despite its appearance as a case concerned with a specialist (and possibly pretty niche) area of copyright, Christie's France is yet another CJEU decision dealing with the relationship between IP rights and contract law [to this end readers will promptly recall the very recent judgment in Ryanair, here].


Article 1 of the Resale Right Directive sets an obligation for Member States to provide for the benefit of the author of an original work of art an inalienable, unwaivable resale right. This consists of the right to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author. 

It's not droit to a suite ...
Article 1(4) further states that:

"The royalty shall be payable by the seller. Member States may provide that one of the natural or legal persons referred to in paragraph 2 [sellers, buyers or intermediaries art market professionals, such as salesrooms, art galleries and, in general, any dealers in works of art] other than [that's the important bit] the seller shall alone be liable or shall share liability with the seller for payment of the royalty."

Christie's France decided to change its terms and conditions so that the buyer, and not the seller, became liable to pay the royalty. The issue thus became: can a contract derogate from the seller’s obligation to pay the royalty as is enshrined in the Directive? 

The Syndicat National des Antiquaires (SNA) did not think so: it actually took the view that, in placing the onus of the resale royalty on the buyer, Christie’s France’s general conditions amounted to unfair competition. 

Thus litigation ensued, and the Court of Cassation decided to stay the proceedings and seek guidance from the CJEU.

The following is the question that the French court referred to the CJEU:

"Must the rule laid down by Article 1(4) of Directive 2001/84/EC ... on the resale right for the benefit of the author of an original work of art, which makes the seller responsible for payment of the royalty, be interpreted as meaning that the seller is required definitively to bear the cost thereof without any derogation by agreement's being possible?"

The CJEU decision

As stated in the relevant press release, this morning the CJEU held that "[t]he cost of the royalty that has to be paid to the author on any resale of a work of art by an art market professional may be borne, definitively, by the seller or the buyer".

.... but rather the droit
to follow resale of artworks
According to the Court,

"[T]he Member States alone may determine the person liable for the royalty. Although Directive 2001/84 provides that the person by whom the royalty is payable is, in principle, the seller, it none the less allows for a derogation from that rule and thus leaves the Member States at liberty to specify another person from among the professional persons referred to in the Directive who, alone or with the seller, will assume liability for the payment of the royalty. The person who has been designated in that way by national law as the person by whom the royalty is payable may agree with any other person, including the buyer, that that other person will definitively bear, in whole or in part, the cost of the royalty, provided that acontractual arrangement of that kind does not affect the obligations and liability which the person by whom the royalty is payable has towards the author ... [S]uch a derogation is in keeping with the Directive’s objective of bringing to an end distortions of competition in the art market, since the harmonisation concerned is limited to those domestic provisions which have the most direct impact on the functioning of the internal market. For the purpose of achieving that objective, thus circumscribed, it is necessary to make provision as to the person liable for payment of the royalty and as to the rules for establishing the amount of the royalty. However, such provision is not necessary with regard to the question as to who, definitively, will bear the cost of the royalty.
The Court does not exclude the possibility that such a derogation may to some extent have a distorting effect on the functioning of the internal market. However, such an effect is only indirect since it arises as a result of contractual arrangements that are independent of the payment of the royalty to the author, for which the person by whom the royalty is payable remains liable."

A more detailed analysis will follow as soon as the judgment becomes available, so: stay tuned!

Dutch Minister trumps Court of Appeal ruling, reasserts EPO immunity

Is this the EPO ...?
"Opstelten: uitspraak rechter geldt niet voor Europese instelling" is the title of an article in this morning's edition of Dutch newspaper de Volkskrant, which brings tidings of the latest twist in the battle over the European Patent Office's governance. You can read it here in the original Dutch or run it through the online translation service of your choice.

The bottom line, as summarised in an EPO staff communication, is this:
"The president has just received an official notification from the Dutch government which has decided to undertake some first actions to ensure that the judgement is not executable". 
The gist of the article in de Volkskrant is that the Dutch Minister of Justice Ivo Opstelten has made a decision on the basis of the EPO's immunity from execution of court orders under international law, an immunity which the Court had previously lifted.  Whether the minister is correct, either in terms of law or in terms of policy, appears to be open to question.

This moggy, having struggled to comprehend the English version of the article is grateful to Bart van Wezenbeek (European Patent Attorney and Senior Associate, V.O.) for the following:
I have not been able to find the official statement of Opstelten and it is also unclear whether Opstelten would have said this as an announcement from the government, from the ministry or on personal title in an interview. In the news item two legal scholars are quoted who criticize the statement: Hans Engels is quoted to say that “Legally he may be correct, but in view of our constitutional system, this appears to be very strange. It is remarkable that this kind of powers reside with a minister. And I do not express myself in a positive way here”. Further, prof. Cedric Reyngaert (Univ. Utrecht) is quoted: “In fact he is eroding the power of the court. International organization will continue to put themselves above the law, although that already is a problem. Opstelten finds his basis in some law of the ’70s. That should be applied dynamically, but he is taking a very conservative view”.
In a further development, this moggy understands that the President and the head of the Administrative Council have invited the Enlarged Board and the Association of Members of the Boards of Appeal (AMBA) committee to meet on 10 March.  She very much hopes that something good and constructive will come from this but fears that, as so often happens, hope will not triumph over experience.

At this point the opinions of the patent fraternity become less helpful than those of specialists in international law and Dutch constitutional law. If readers can ask any of them for an expert input, that would be most helpful.

Failure! What failure? Things to do with patent filing figures

Was it only yesterday that this Kat, in his Wednesday Whimsies, posted a link to the UK Intellectual Property Office's The Patent Guide A handbook for analysing and interpreting patent data, which states:

"At present there are clear differences in perspective between professional patent experts, researchers undertaking patent analysis and the audience for this research, which includes governments, the press, businesses and individuals. Such differences increase the possibility for incorrect analysis or inappropriate interpretation of analysis. Decisions based upon this could be incorrect and potentially harmful".
Funnily enough today the European Patent Office publishes some patent data on which this Kat's friends at the Chartered Institute of Patent Attorneys have already pounced, producing the following media release.  Note the headline assertion that British business is failing to protect innovation, then read on.  The media release reads, in relevant part:

Figures released today ... by the European Patent Office show that, while UK patent filings have increased since last year, domestic businesses are falling behind the rest of Europe in protecting and exploiting their intellectual property.

The EPO released its annual report today which shows that UK filings have increased 4.8% compared to 1.2% average growth across Europe. This was the highest growth in UK filings since 2011.

However, the figures also show that of the seven leading European economies, only Italy is below Britain, both in terms of patent filings per $US billion of non-service Gross Domestic Product and per head of population (see graphs).

Leading patent attorney Matt Dixon said, on behalf of CIPA: “British businesses need to wake up and realise that patents ... are a key part of everyday innovation strategy. Without protection for their products, British businesses leave themselves wide open to competition from lower cost economies, such as China, who can simply copy technology with impunity. In an innovation economy, where 80% of a business’ assets are intangible, companies cannot afford to fail to protect the fruits of their product development. 

“The UK is only slightly better than Italy in the rate of European patent filing per head of population and way behind Germany, France, Sweden, Switzerland and the Netherlands. 

“Even if account  is taken of the UK’s significant service sector, where less patenting would be expected, the picture remains the same; Britain has fallen behind other European countries.” 
This Kat wonders how such a depressing conclusion can be drawn from the data in question and he hopes that readers may be able to assist him, either by showing him how it can be done or by showing that it can't.  He struggles to understand why either the number of patent filings per $US billion of non-service Gross Domestic Product or the number of patent filings per head of population should reflect a failure to protect innovation, especially when
  • the patent system only covers some forms of innovation but not others, 
  • innovations in, for example, processes which cannot be reverse-engineered may be better exploited commercially by not filing for a patent,
  • there exist other intellectual property rights which, when deployed individually or in combination with one another may provide better, longer or cheaper forms of protection,
  • the number of patent filings may reflect norms of professional advice which vary as between countries
to name but a few factors that may be of relevance.  This Kat hopes that he will receive responses from economists and statisticians -- and in particular from members of the IPO's Informatics team, whose big chance this is to prove themselves.

Wednesday, 25 February 2015

A test-drive for the Unified Patent Court: Part III

This post returns to the subject of patents in Europe, but in a very different context from that which has been exercising so many of our readers of late. Here the IPKat hosts the third in the series of posts from London-based law firm Bristows (where guest Kat Tom works) on its real-time experiment in litigating before the proposed Unified Patent Court (UPC).

This series is masterminded by Alan Johnson and Alexandria Palamountain and the first two reports are "A test-drive for the Unified Patent Court" (June 2014, here) and "A test-drive for the Unified Patent Court: Part II" (October 2014, here). And now ...
The story so far 
Getting dogs to obey is easy; getting litigants
to obey case management may not be ...
Following fairly typical pre-action correspondence with the patentee threatening infringement proceedings, the action kicked off in April last year with a pre-emptive application by the potential defendant to revoke the patent in the London branch of the Central Division.  In response, the patentee made an objection under Rule 19.1(a) of the 17th edition of the Draft Rules, that is a preliminary objection to the jurisdiction and competence of the Court.  While the application looked “ambitious”, Judge-Rapporteur Rieu (a Solicitor and Member of the Paris Bar working at Bristows) did not simply dismiss the application, but used her case management powers to order the claimant to produce evidence to it had implicitly referred so that the defendant could know the full case it had to meet before serving its defence, and extended time for service of the defence commensurately.  This was something of a surprise to the claimant (and probably the defendant too), but when one looks closely at the case management powers in the UPC Rules, they are incredibly wide.

Next steps 
The claimant was given a reasonably tight deadline to provide its further evidence, and as so often happens in real life, one fact witness who had seemed helpful decided not to cooperate and refused to sign a witness statement.  However, it served an expert report and one of the two witness statements required by Judge Rieu’s order.  As a result of the further investigation with the witnesses (and the gap caused by the uncooperative witness) the claimant also modified its Statement of Case.  Neither the defendant nor the Court (so far at least) has taken any objection to this, and the defendant then duly filed its defence within the revised time limit.  One might have expected it also to have counterclaimed for infringement, but it did not.  Instead, it allowed the defence, reply and rejoinder to be served before bringing a separate action for infringement in the London local division, adding a second patent into suit. 
Too much bifurcation
can take a heavy toll ...
This move by the patentee is perfectly permissible under Article 33 of the Unified Patent Court Agreement (UPCA) which specifically permits patentee defendants to central division UPC actions to being local (or regional) division infringement proceedings instead of counterclaiming for infringement in the central division.  However, what could be the motivation?  For reasons not immediately apparent, the patentee seemed to want de facto bifurcated proceedings, even though (in contrast to the German experience) the validity hearing would be before the infringement hearing.  Might the patentee have been concerned to construe its claims narrowly to secure a finding of validity?  Or did it have in mind some tactic to do with Rule 70 which then comes into play?  This requires that the President of the Court of First Instance is informed of the existence of the two sets of proceedings and that, if a counterclaim for revocation is included in the infringement action, the central division action must stay its revocation proceedings pending a decision by the local division as to how to proceed.  
This would suggest that the progress of the action would lie in the hands of the infringer.  If it pleaded invalidity as a defence (which requires it to counterclaim for revocation) its revocation action would be stayed and the trial date lost.  Against that, if it did not plead invalidity, but only non-infringement as a defence, this would avoid postponement of the revocation case in the central division but create a second set of proceedings and further expense and uncertainty. 
However, instead of letting matters take their course, the Court took the initiative.  It invoked its powers under r.340 and summoned the parties to discuss joinder of the two actions.  The hearing took place on 16 February, involving the judicial panels of both divisions. 
At the hearing all was revealed as to why the patentee had not counterclaimed for infringement, but had instead brought its separate local division action.  It said that it believed that the central division did not have jurisdiction to hear an infringement action concerning the second patent which had been infringed only in the UK and was not the subject of the revocation action; and. since it had wanted the two infringement cases heard together, it considered it had no choice but to start the local division action -- although this did not explain the delay in bringing its local division action which it attributed to the time taken to collect the necessary evidence.

The alleged infringer thought it too early in the local division proceedings to join the two actions together.  It cited the provision in R.340 that Article 33 should be respected and drew attention to the rules (70.3 and 37) which relate to how local division actions should proceed in circumstances such as this where there is a pre-existing revocation action.  It noted that, under these rules, there was to be no decision about how to handle the case (as regards bifurcation) until after close of pleadings.  It also expressed concern that its revocation action should not be derailed by joinder of the two actions.  Neither did it want to have its ability to prepare its response to the infringement claim prejudiced by having time limits shortened so that the infringement part of the case could catch up with the revocation case which was otherwise heading to an interim conference in April and an oral hearing in July. 
The court decided that it had the power under R.340 to join actions together at any time when they concerned the same patent (as here), albeit another patent in addition.  It noted that the only requirement was that the actions were both "pending".  It considered the option of allowing two sets of related proceedings to continue in parallel to be undesirable, especially given that the central division proceedings would mandatorily have to be stayed if there was a counterclaim for revocation in the local division action.  
Implicitly criticising rule 70, it reasoned that it need not wait to see what happened, knowing that there could then be a significant delay.  It equally thought that the only way delay could be avoided without joinder was to permit the two actions to continue in parallel which it thought a waste of court resources, as well as dragging out the dispute as a whole.  It did not think respecting Article 33 required it to wait to see if Rules 37 and.70.3 needed to be applied. 
In view of this, the court decided to conjoin the proceedings and set a timetable which meant that the dates proposed for the interim conference and oral hearing could maintained.  To do so, it abridged the court time limits for pleadings in the new conjoined action, and permitted the alleged infringer as much time as possible for its steps (primarily to serve its defence), leaving the patentee with a very tight time limit (just one week) for its reply and defence to counterclaim. 
The court decided that the requirement to respect Article 33 would be met by having the local division hear the conjoined action.  It reasoned that the object of Article 33 was to give primacy to local and regional divisions at the expense of the central division.

In the light of this, the shape of the action is now a traditional action for infringement with revocation counterclaim, despite the previous procedural manoeuvres of the parties.  Whether in the real system the court would be as proactive as this -- particularly as this involves different court divisions cooperating -- remains to be seen.  Also, the timings only just permitted the court to take this course. 

There was no available artwork for
"ducking the question", but we found
this one for "questioning the duck"
So, under R.340, did these judges make the right decision?  Does the power under the rule permit joinder at any time?  Does it include a power to join actions which involve the same patent, but also a different patent?  And what does respecting Article 33 really mean?  But perhaps the most interesting aspect of this latest instalment is to highlight an uncertainty as to the scope of R.49.2(b) (“The defence to revocation [actions in the central division] may include ... a Counterclaim for infringement”).  Is a patentee sued for revocation in the central division limited to a counterclaim for infringement of just that patent, or can it include another patent in its counterclaim if it wishes?  This would certainly be the most efficient use of party and court resources, but do the rules permit it?  On this the Bristows court took the diplomatic course of ducking the question ...
The next stage is the interim conference scheduled for 14 April.  The Kats' friends at Bristows have promised to keep us all posted.

At this stage it does all seem very daunting, partly because of the unfamiliarity of the proposed new system and partly because of the wide range of options that appear to result from its remarkable flexibility. For litigants and their professional representatives this will mean careful planning, a mastery of game theory and, at least initially, some labour-intensive thinking, says Merpel.

Wednesday whimsies

EPO and a Kat's reproach. A little over 24 hours ago, the IPKat's faithful friend and colleague Merpel posted the news that the UK's Intellectual  Property Office (IPO) had issued a statement concerning the current situation in the European Patent Office. The IPO indicated its interest and gave contact details for anyone who wanted to ask it any questions.  Since then nearly 15,000 readers have received that blogpost by email or visited it directly, and getting on for 50 readers' comments have been posted -- many of them highly critical of the IPO or just plain rude.  To date, however, only three people (bless them) have taken the trouble to contact the IPO, two of these being from outside the UK.  This Kat finds the level of response highly disappointing, also noting that no comment suggests that any other national offices have publicly indicated that they are taking any interest and that they are willing to speak to stakeholders.  He suggests that a better and more constructive approach to take is to engage with national offices on a mature level and to encourage them to understand the current menu of problems as well as you, our readers, do.  This may not bring immediate benefits; indeed it may not bring any benefits at all -- but it is surely more likely to do so than to expect governments and their representatives to discern the truth by piecing together lengthy strings of blog comments.  Bottom line: if your national IPO listens, speak to it. If it doesn't, try to find out why. And thanks once again, UKIPO, for at least making the effort to say something [and can we please hear a bit more, adds Merpel, preferably from a Minister].

Patents and statistics: a guide.  This Kat has just got the link to The Patent Guide A handbook for analysing and interpreting patent data, an e-pamphlet from the UK Intellectual Property Office's Informatics team [Merpel explains: "Informatics" is a hybrid word formed from "Information", because it's useful, and "Rheumatics", because it can be a real pain].  According to the team:
The study of patents has been approached with increased enthusiasm in recent times. At present there are clear differences in perspective between professional patent experts, researchers undertaking patent analysis and the audience for this research, which includes governments, the press, businesses and individuals. Such differences increase the possibility for incorrect analysis or inappropriate interpretation of analysis. Decisions based upon this could be incorrect and potentially harmful.

This handbook has been created to improve shared understanding between patent experts and those undertaking or using patent research.
Ostensibly 28 sides long, its operative part is a good deal shorter, so check which pages you really want before you print it out.  Future editions are already being planned, which propose to embrace analysis and interpretation of statistics on other intellectual property rights (IPRs). If you want to discuss the content of this handbook or suggest future content, this is your big chance: you can email the Informatics team at

Around the weblogs. There's plenty going on in the Benelux region these days. Apart from the decision of the Gerechtshof den Haag in the now notorious matter of the European Patent Office and human rights [Merpel's wondering if any other IP blogs are regularly covering these developments; her favourite ones aren't], the MARQUES blogs Class 46 and Class 99 have been picking up on some hot stuff. On Class 46 veteran Katfriend Gino van Roeyen comments on a Benelux office trade mark ruling in an opposition involving traditional Zeeland dress and Denise Verdoold explains why IUS is no use as a trade mark for legal services in Belgium, while Class 99's Hidde Koenraad reports on incremental developments over earlier designs as viewed by The Hague's interim relief court.  Mark Anderson, on IP Draughts, speculates as to what will happen to the market for reproduction 'designer' chairs once the UK has brought them all back into copyright protection.  Finally, IP Finance's Rob Harrison updates us on the battle over Nespresso's coffee capsules in Germany -- this Kat had no idea that the market for these things was so large, or of the possibility that as many as 1,700 patents might govern them.

Scents and sensibilities II.  Following this morning's post ("Scents and sensibilities: how far can copyright stretch?", here) on the BLACA-IPKat Sensory Copyright event, this Kat has now received the PowerPoint presentations both from Eleonora (here) and from Tobias (here).  On the right you can see Eleonora and Tobias holding samples of HEKSENKAAS, the product on which the Dutch judiciary will soon have to pronounce as to the copyright-protectability of its taste.  The product is reported to be a combination of cream cheese, mayonaise, leek and garlic, so you might want to experiment with it in the privacy of your own kitchens. Meanwhile, if you want to get a taste of Dutch jurisprudence on the subject of taste protection, here's a link to an English translation of the decision in Kecofa v Lancôme.

"FAGE, Feta, Fontina": GIs come under scrutiny

Last week this Kat attended "Geographical Indications: FAGE, Feta, Fontina, and the battle for world markets", this being a seminar organised by AIPPI UK and held in the cosy comfort of the London office of Freshfield Bruckhaus Deringer.  The speakers were Wolf Meier-Ewert (Counsellor, IP Division, World Trade Organization) and Dev Gangjee (Associate Professor, University of Oxford). In the chair was Sir Richard Arnold, who will rarely have an easier time chairing any event: both Wolf and Dev were as charming as they were fluent and, since they had carved up the topic so well between them, there were no problems of overlap or of important issues falling between the two of them.  There were exactly the right number of questions to fill the gap between the last audible syllable of Dev's presentation and the first confident crunch of teeth on canapés as the reception got underway.

This event being conducted under the Chatham House Rule [though this Kat can't for the life of him see why], it would be imprudent for this Kat to pin the things that were said to the people who said them -- though he can say that the speakers reviewed the historical context and development of GIs, the international structure of GI protection, the tensions between those nations seeking protection through trade mark registration and the larger number that prefer sui generis rights. Also covered were issues of genericity, the extension of protection beyond consumables to manufactured craft products and prospects for a future in which bilateral trade agreements are increasingly forcing the pace.

Smoky checks the cupboard for PGIs ...
This Kat asked his usual question about why there doesn't seem to be any research into the extent and effect of "GI creep", as amendments to GI registrations in the European Union are increasingly amended, usually either to cover a larger territory or to reduce the criteria listed in the specification which require compliance if use of the GI is to be permitted.  He also made the point that there's little advantage to be gained by most businesses in the EU in promoting the PGI logo (above, left) which only 8% of consumers apparently recognise: by promoting it they are also promoting their competitors at the top end of the market who are also entitled to use it, while promotion of their own trade mark should give them a better return on their marketing expenditure. The important thing, he thinks, is that the logo should be recognised and respected by competitors, distributors and retailers.

Scents and sensibilities: how far can copyright stretch?

Scents and sensibilities. Yesterday's joint BLACA-IPKat event on sensory copyright (on which see earlier Katpost here) was a great success. Arguing that copyright law was already capable of protecting original smells and tastes, Eleonora Rosati led the audience through the line of Court of Justice of the European Union rulings, from Infopaq to Painer, that appeared to undermine the rigidity of the United Kingdom's "closed" system in which only listed types of work could be protected. Arguing that we should be thinking in terms of what constituted a "production" in terms of Article 2 of the Berne Convention, she also drew support from the provisions of TRIPS and from dicta in recent English decisions. Tobias Cohen Jehoram opposed the notion of such protection, observing that lawyers have the ability to create their own reality and that, in his father's words, the Dutch Supreme Court ruling that perfume was copyright-protected, in Kecofa v Lancôme, was "all sails, no anchor". Sensory copyright made no sense in legal, practical or commercial terms, he maintained, listing the many problems that must be addressed when the corpus mechanicum is combined with the corpus mysticum (this is a polite way of saying that you can't detach a smell or taste from the physical object from which it emanates).

What happened next? Following the presentations, a lively and highly interactive discussion ensued.  Dutch IP litigator Sven Klos stole the show with his cameo role as not only the lawyer who will be arguing these issues against Tobias for real in a Dutch court next month, but also as the generous provider of samples of a product which, he demonstrated to the satisfaction of many, actually had a new and original taste.

... unless they are Kats
Thank-yous.  Many thanks go to Reed Smith LLP, for letting us use its lovely facilities, even if the building is so big that you can't actually find it, to the speakers, to Sven Klos for bringing his own tasties and to Sir Richard Arnold, for maintaining the excellent record that members of the IP judiciary in England and Wales have for attending public events, making themselves available to discuss their subject matter and generally showing how much they care about this field of law. Other contributors to the vitality and intellectual cogency of the event included long-term Katfriend Alexander von Mühlendahl and Brigitte Lindner, to whom this Kat also offers his thanks.

More to come.  The IPKat looks forward to making the PowerPoints of the two speakers' presentations available on this weblog once he has received them.  Tobias is also letting us have a copy of an English translation of Kecofa v Lancôme.  There is no truth in the rumour that the smells referred to in the seminar will be hosted on Google Nose ...

Cash for access has always
been with us ...
Cash for access.  The British media have been carrying many reports in recent days on another "cash for access" scandal, with eminent politicians allegedly selling to business clients their ability to provide access to members of the government whom it might not otherwise be possible to approach. BLACA, too, has a "cash for access" programme -- but one which is entirely lawful and indeed perfectly laudable.  On payment of a moderate sum -- less than £1 a week -- by way of a membership fee you can procure access to all BLACA's regular meetings, not to mention a substantial discount on the fee for certain other events. There is also a student discount.  You can sign up by clicking here.  Can't be bad, says this Kat.

Tuesday, 24 February 2015

The burden of proof in "double identity" trade mark disputes: rising to the Supreme challenge

Earlier today this Kat posted this note on Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), the latest in a line of important trade mark rulings from Mr Justice Arnold in the Chancery Division, England and Wales.  That note sought to cover the decision as a whole; the following analysis from guest contributor Tim Behean (Sipara, Oxford) focuses on just one aspect of this multifaceted ruling: burden of proof in so-called "double identity" actions in which the mark used by the defendant is identical to that of the claimant and the goods or services of the respective parties are exactly the same too.  This is Tim's take on this topic:
Supreme Petfoods v Henry Bell & Co: why the Court of Appeal was wrong in Interflora on the burden of proof in "double identity" cases

Supreme Petfoods is remarkable for Arnold J’s tour de force analysis of the CJEU’s case-law on the double identity rule (Article 5(1)(a) of Directive 2008/95 and Article 9(1)(a) of Community Trade Mark Regulation 207/2009), and for his conclusion, disagreeing with the Court of Appeal in  Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403, that the burden of proving that any of the trade mark functions is prejudiced falls on the trade mark owner.

The double identity rule has many important implications. One is the challenge for businesses to find and clear new trade marks over the vast quantity of marks now registered, and the practice of some trade mark owners to file broadly, covering many if not all goods and services within classes of potential interest. In this way they can secure protection for their marks, most directly by oppositions, for wide ranges of goods and services for which they will never be used, despite the potential for other uses of the same mark which will cause no confusion in the marketplace.

No relation ...
The facts of the case in brief are that the claimant owns a UK registration for SUPREME as a word mark, and various other UK and CTM registrations for SUPREME with design elements. It had used these marks for petfoods since 1990, and due to the long use, the mark acquired a “slender degree” of distinctive character for small animal foods – though it was descriptive and declared invalid for other goods. The defendant and its predecessors had used SUPREME on its packaging for some 20 years, with no evidence of confusion. Accordingly, Arnold J was able to find no infringement under Article 5(1)(b), or under Article 5(2); that the defendant had a good defence of descriptive use under Art 6(1)(b) and there was no passing off.

As for Article 5(1)(a), this was a case of honest concurrent use within the Court of Justice of the European Union (CJEU) ruling in Budejovicky Budvar NP v Anheuser-Busch Inc. However, as there are important uncertainties and contradictions in the CJEU’s case-law, Arnold J reviewed it to discover in particular what it reveals about the burden of proof on the requirement for prejudice to trade mark functions. The analysis is from paras 83 to 164; a mere summary would not do it justice. What emerges is that the CJEU has developed seemingly different approaches for different types of case, and no express decision on burden of proof in any of them, only suggestions from the way the court expresses its rulings.
(1) The “normal case”. This is where the defendant uses the same mark in relation to the same goods, unconnected with the trade mark owner. In such a case, it is inherently likely that there will be confusion, and this is an important protection for trade mark owners, especially in counterfeit cases. Arsenal v Reed is an example, and contains the first statement that the double identity provisions are to be interpreted as requiring in addition a prejudice to the trade mark functions. Here emphasis is placed on the origin function, and this “normal case” is most consistent with TRIPS Art 16(1), that there is a presumption of confusion, but which can be rebutted by the defendant. However the TRIPS presumption deals only with confusion (the origin function). What about the other functions (quality, communication, investment and advertising)? There does not seem to be any reason why they should be presumed, Art 5(1)(a) does not require a trade mark with a reputation. They might be for the trade mark owner to prove. But on the other hand it would be more consistent to treat them as presumed in the same way as confusion.

(2) Exhaustion of rights. Parallel import cases where the trade mark owner’s goods are imported from outside the European Economic Area (EEA) and are first put on sale in the EEA without the trade mark owner’s consent. In the CJEU cases starting with Silhouette, it is established that this amounts to infringement under Art 5(1)(a). But the cases make no reference to this use being prejudicial to any of the trade mark functions, or even whether this is a requirement (similarly for the re-packaging cases where the defendant does not comply with the CJEU’s guidelines). These cases could be reconciled, however, on the basis that the trade mark functions we are concerned with are the right to decide which goods to sell under the trade mark in the EEA and how they should be marketed.

(3) Honest concurrent use. In these cases there is no adverse effect on the origin function, as consumers have become used to the position and there is little if any confusion. The burden of proof seems to be on the defendant. The other trade mark functions although mentioned in the decision, do not feature in the court’s answer to the question asked, but presumably they ae not affected by the concurrent use either.

(4) Keyword advertising cases. For these cases Arnold J refers principally to Kitchin LJ’s decision in Interflora, that the burden of proof is on the trade mark owner thereby overturning Arnold J at first instance. Arnold J responds that if this was intended to apply to cases other than keyword advertising, it is obiter, and criticises it for failing to take account of the CJEU case-law, a wrong interpretation of Class International v Colgate-Palmolive (on exhaustion of rights), and as with the CJEU cases on keywords, failing to consider TRIPS Art 16.
Arnold J’s conclusion (paras 163-4) is that the position is unclear. But for this case it does not need to be referred to the CJEU and instead he adopts what he considers is the better view, more consistent with the case-law and TRIPS, that to establish infringement under Articles 5(1)(a)/9(1)(a), the trade mark owner need only prove the first five conditions [see ADDENDUM below]. If satisfied, the burden shifts to the defendant to show that his use does not prejudice any of the trade mark functions. An alternative might be that only a presumption of confusion is made, and then if the defendant shows there is none it is for the trade mark owner to show if he can that other trade mark functions are prejudiced. However, there would likely be no practical difference in many cases. It is hard to avoid concluding also that he is saying that the Court of Appeal has made a mistake and reached a wrong conclusion. Is Arnold J’s conclusion only obiter because the case is really about honest concurrent use? Or the grand unifying theory of double identity?
Thanks so much, Tim, for your analysis -- it's much appreciated.

ADDENDUM: a reader has written in to ask what the conditions are. For the sake of clarification, here's para 83 of Arnold J's judgment:
"The six conditions. The case law of the CJEU establishes that the proprietor of a trade mark can only succeed in a claim under Article 5(1)(a) of the Directive or Article 9(1)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect, or be liable to affect, one of the functions of the trade mark [citations omitted]"

BREAKING NEWS: UK Government issues statement on EPO

The IPKat has just received a communication from a spokesman for the UK Intellectual Property Office (IPO) which he has been asked to draw to the attention of the readers of this weblog. This communication refers to Merpel's Katpost yesterday entitled "EPO, SUEPO and a question of governance: why a word from the Baroness would be welcome" (here) and it reads as follows:

"The UK Government takes its responsibilities in relation to the EPO very seriously.

We are well aware of the social unrest at EPO and the views which some users have expressed about the operation of the Office. This comes at a time of significant reform to support the long-term future of the Organisation.

We regularly hold meetings with UK staff based at the EPO where their concerns are aired and continue to discuss these issues with stakeholders to ensure their views are taken into account.

It is in the interest of all UK stakeholders for UK representatives to play an active role in the governance of the EPO, and we will continue to do so. The UK Intellectual Property Office is in regular contact with relevant stakeholder organisations and is always willing to answer any questions that attorney firms and other users have about UK oversight of the EPO as a member of the Administrative Council.”
On behalf of Merpel and all the readers of this weblog, the IPKat wishes to thank the IPO for what, he believes, is the first public response of any national office to the current unrest. He also thanks the IPO for its willingness to answer questions from those concerned about the present situation and what he hopes will be its future resolution.

It is very much hoped that other national offices will express their willingness to do the same, whether through the medium of this weblog or through channels more appropriate to the nations concerned.

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