QMJIP

Queen Mary Journal of Intellectual Property

“BREXIT” energy drinks – not contrary to public policy or accepted principles of morality

by Alina Trapova

EUIPO’s Boards of Appeal allowed the trade mark “BREXIT” to be registered for, among other things, energy drinks and electronic cigarettes (R-2244/2016-2, decision of 28 June 2017).

Initially, the trade mark examiner refused the application on the grounds of morality/public policy (Article 7(1)(f) EUTMR), as well as lack of distinctive character (Article 7(1)(b) EUTMR). Surprisingly, considering the rarity of such decisions, larger emphasis was placed on the morality and public policy ground. According to the examiner, if allowed to register the trade mark would have an offensive impact on the sensitivity of the average European consumer and particularly on the 48% of the British population that voted “REMAIN” in the UK referendum in June 2016.

The Second Board of Appeal overturned the examiner’s decision and concluded that “BREXIT” is indeed a valid trade mark in respect of both cited absolute grounds for refusal.

  • Article 7(1)(f) EUTMR

Decisions on this ground are relatively rare. The moral principles to be safeguarded here are assessed in the context of current attitudes prevailing at the time of the filing of the trade mark. Hence, the Board appreciates that moral principles are not set in stone.

The Board then went on to analyse the meaning of the term “BREXIT”. It did so by referring to concepts familiar to (nearly) all European citizens – “referendum”, “leave”, “remain”, “51.9%” and “30 million people voting”. Shortly afterwards it concluded that “BREXIT” embodies a sovereign political decision, entirely taken in conformity with the Lisbon Treaty and the UK’s constitutional requirements. This was logically supported by references to the UK Supreme Court’s judgment of 24 January 2017, the European Union (Notification of Withdrawal) Bill 2017, as well as Article 50 of the Lisbon Treaty. As a result, “BREXIT” bears no moral connotations whatsoever.

Contextualising its decision by reference to general legal principles and not only EUTM legal pillars, the Board turns next to the notion of freedom of expression. Accordingly, the freedom of expression, essential in a democratic society, is not unlimited, says the Board, and is subject to certain restrictions, “construed strictly”, whereby the need for such exceptions should be “established convincingly”. Contrary to the examiner, the Board states that trade marks such as “BREXIT” may not be barred merely because the ideas themselves may “offend, shock or disturb” a significant part of the public, such as those in favour of staying in the EU. The Board acknowledges that a certain proportion of the British public may have been upset about the referendum outcome, but “being upset does not constitute offense”. Hence, even these strong opinions in favour of BREXIT are protected speech.

When combined with the goods applied for (electronic cigarettes, energy drinks, fruit juices, etc.) the mark “BREXIT” provokes humour and its political connotation fades when the sign is used to indicate commercial origin.

In addition, some UK “BREXIT” marks (“BREXIT THE MUSICAL” in Class 41, “English Brexit Tea” in Classes 4 and 30, “BREXIT” in Classes 9, 21, 25 and 35) have been cited and the Board comes down to the conclusion that it would be “odd that these marks were allowed on the register if the word fell foul of public policy or the basic norms of society”. What strikes here is that registration of national marks was accepted as a convincing point in favour of registration. Usually, at this stage the Board highlights in its reasoning the EUTM system’s autonomous character and the standard principle that the legality of trade mark applications is only assessed against the EUTMR. Relying on national authorities when dealing with EUTMs has also relatively recently been criticised by the General Court (see Winnetou, T-501/13, see here). Anyhow, the Board had already thoroughly reasoned above based on both objective morality principles, as well as freedom of expression provisions. Therefore, this little omission could be easily excused.

  • Article 7(1)(b) EUTMR

As to the lack of distinctive character, the Board highlights that “BREXT” is not to be equated to “Made in Britain”, which is indeed laudatory and hence, not a valid trade mark. In relation to the goods applied for,“BREXIT” conveys no information about their quality. Therefore, it is not against the absolute ground of Article 7(1)(b).

Comment

“BREXIT” trade mark applications were bound to come along, so this decision is of little surprise. What strikes though is the applicant – it is not Nigel Farage, nor any of the LEAVE campaigners. Quite the opposite – it is Pawel Tumilowicz, owner of Brexit drinks Ltd. and a polish entrepreneur in the UK., who happens to have come up with the brand “for a laugh”.

Alina Trapova, PhD Candidate, Bocconi University

QMJIP – Volume 7 – Issue 2 (June 2017)

by Giancarlo Moretti

The last issue of QMJIP has been released (Volume 7 – Issue 2). The table of content reads as follows:

  • Editorial – Johanna Gibson
  • Intellectual property protection in outer space: reconciling territoriality of intellectual property with non-territoriality in outer space – Yun Zhao
  • The Report of the Parker Committee on Patent Law 1916 – Phillip Johnson
  • Should Alibaba be liable for the counterfeiting activities of online stores? On the secondary liability of internet service providers in Chinese trade mark, copyright and tort law – Shujie Feng
  • Revisiting the historical origins of the Jordanian trademark system: the UK legacy – Mohammad Amin Naser
  • Effects of foreign direct investment on intellectual property, patents and R&D – Korhan Arun and Durmuş Çağrı Yıldırım
  • Intellectual property and intellectual capital: defining a relationship – Nenad Gajic
  • Book Review – Ana Alba Betancourt
  • Book Review – Kelvin Yingyew Sum

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

“Turn Down For What?” How About For Copyright Law!?

by Lisa D. Rhooms

In early May, Hip-Hop artiste, Lil’ Jon, and DJ and record producer, DJ Snake, were sued for willful copyright infringement. The complaint[1] is that the massively popular song “Turn Down For What”[2] released by the defendants, substantially copied another song, also entitled “Turn down For What”[3], and performed by Freddie GZ. The complaint contends:

“The copying alleged herein directly misappropriates quantitatively and qualitatively important portions of [the] Plaintiff’s Original Work in a manner that is easily recognizable to the ordinary observer. While [the] Defendants received accolades, awards, and a fortune for the Infringing Works, and built a brand on a foundation of copyright infringement, the writers truly responsible for the success of the Infringing Works received nothing, and their publisher, which owns the copyright, is now forced to bring this action to vindicate their rights for the taking of their work…”[4]

Lil’ Jon and DJ Snake are also not the only defendants whom the complaint alleges either performed, sold, caused to be sold, licenced, distributed or benefited from the sale of the purportedly infringing song.

The complaint also claims that:

“The idea for the Original Work came about in mid-to-late 2012. Freddie GZ and the team at A2M routinely threw around a saying, namely “turn down for what.” “Turn down for what” was their version of the colloquial term “turn up” (used to describe “get wild” or “let’s party,” among other things). Freddie GZ wanted to brand it, and believed the best way to brand this theme was to record it in a song. Freddie GZ composed the Original Song with Tha Architectz in late 2012; the final version was finished in the studio in January of 2013. A2M liked the Original Song and it was released as a single on March 9, 2013.[5]

The plaintiff contends that the original work was released to the public via several channels, including radio, iTunes, Spotify, Amazon, and YouTube, and gives statistics of the reach of the original work. The complaint also alleges that after the release, the song was “hyped” by respected Hip-Hop artistes such as Charlamagne.

As evidence of Lil’ Jon and DJ Snake’s awareness of the claimed original work, the plaintiff suggests:

“Tellingly, Lil Jon and DJ Snake exchanged tweets on July 15, 2013, only four months after the release of [the] Plaintiff’s Original Work. DJ Snake tweeted to Lil Jon ‘Turn Down For What ??? @LilJon’; Lil Jon replied ‘LET’S GO! Rt’@djsnake: Turn Down For What ??? @LilJon.’”[6]

The plaintiff further alleges that it was after the release of the original song that Lil’ Jon and DJ Snake recorded their “Turn Down For What”, which was “striking[ly] similar…[to] the Original Work and [which]when paired together with the timeline of events cannot be a coincidence.[Further] there is no possibility that the Infringing Works are creatures of independent creation.[7] Lil’ Jon and DJ Snake’s song was released in December 2013.

The crux of the copyright issue is that the similarities between Freddie GZ’s song and the contended infringing song are obvious, and are either undeniable similar or substantially similar; “strikingly similar”. As evidence, the complaint cites “Whosampled.com”, a website “which claims to be the world’s most comprehensive, detailed, and accurate database of samples, cover songs, and remixes, covering the entire history of music”[8],and which suggests that the Lil’ Jon and DJ Snake song sampled the plaintiff’s song.

Without going into too much about rhythm, count and lyric placement, as the complaint does, one essential point in the complaint was that:

“The Original Work’s introduction contains a steadily rising synth sound and the Infringing Works also start with a slowly rising synth line for the first seven measures. This similarity would be obvious to an ordinary listener and is just one example of the substantial similarities between the works at issue.” [9]

 Further:

“The structures of both songs are substantially similar. The choruses, which follow the introduction in both songs, are repeated three times in each song after two eight-measure sections, and both songs conclude with an instrumental section. This is very significant, would be obvious to an ordinary observer, and is a striking similarity. This is also not a common structure and the uses of eight measure sections are not common in rap songs.”[10]

 The complaint then alleges the commercial success of the allegedly infringing single which sold over a million copies in less than four months, certifying it platinum, and which has been remixed, with even a popular Dancehall remix; and which has been included on several compilation albums. The allegedly infringing song has also been on the music charts, and featured on the soundtracks of major motion picture films, and in commercials. Further, “Turn Down For What” has been featured on merchandise, and trade mark applications have been filed by the defendants for the phrase, as a word mark. The complaint sets out:

“Upon information and belief, the overwhelming success of the Infringing Works has provided [the] Defendants with substantial opportunities to tour and perform around the world. The revenue and profits derived from these performances and appearances are attributable to the success of the Infringing Works. These opportunities would not have been available to [the] Defendants if they had not infringed upon [the] Plaintiff’s Original Work, and are a ‘but-for’ cause of such profit.”[11]

The complaint states that these profits exceed fifteen million United States dollars (US$15,000,000.00).

In the concluding paragraph, the plaintiff prays for a declaration of infringement, an award of damages, and a permanent injunction, among other relief. It also demands a trial by jury.

Comment and Conclusion

Copyright Law is serious business, and if recent judgments such as the Robin Thicke “Blurred Lines” case are anything to go by, there may be nothing to sing, dance or ‘turn up’ about for the defendants. It will be interesting to see where this case goes, and whether substantial similarity will be found, coupled with an intention or will to infringe an earlier work, from which huge commercial gains flowed. Should a jury grant the relief as prayed, “Turn Down For What” may be turning down for good, for Copyright Law.

Lisa Diana Rhooms

 Assistant Editor, QMJIP

[1] Case 1:17-Cv-03329 filed 05/04/17 in the United States District Court for the Southern District of New York.

[2] https://www.youtube.com/watch?v=QFy0hQ3lY-w.

[3] https://www.youtube.com/watch?v=stUSatCj6QM (Warning! Contains expletives).

[4] ibid n. 1 [2].

[5] [26] and [27].

[6] [37].

[7] ibid.

[8] ibid n. 1 [47].

[9] [48].

[10] [58].

[11] [86].

“Establishment” in the EU requires a broad interpretation, says the CJEU

by Alina Trapova

While likelihood of confusion, reputation, earlier national rights, distinctiveness and descriptiveness, etc. certainly form the “meat” of most EU trade mark disputes, a case can be quickly thrown out of court on the ground that the said court is not the right forum to hear the dispute. This is however not what is foreseen to happen in the Hummel vs. Nike conflict below, which originated in the German courts (and is perhaps going to unfold there in the future).

Whoiswho

Hummel Holding owns an international trade mark registration designating the EU for goods in Class 25 (“clothing”).

Nike Inc., the first defendant, is the ultimate holding company of the Nike Group, which has its seat in the US.

Nike Retail BV, the second defendant, forms part of the Nike Group and has its seat in the Netherlands. Interestingly, this undertaking operates a website on which Nike goods are sold in Germany and supplies independent dealers, again in Germany, with Nike goods.

Nike Deutschland GmbH, not a party to the proceedings, is a subsidiary of Nike Retail BV and has its seat in Germany. It does not have its own website, nor does it sell goods to the end consumer or intermediaries. What it actually engages in, is the negotiation of contracts between intermediaries and Nike Retail BV and the support of Nike Retail BV in connection with advertising and performance of contracts. It also provides after-sale service to consumers.

Previously on whohasjurisdiction

Hummel claims that some of Nike’s products, in particular basketball shorts, infringe its trade mark and that most of these infringements took place in Germany. Hence, it brought an action against Nike Inc. and Nike Retail BV before the Regional Court of Düsseldorf (Germany). The court held that it had jurisdiction since Nike Deutschland GmbH was an “establishment” of Nike. The action failed however on the merits.

Upon appeal, the concept of “establishment” as per Article 97(1) EUTM was disputed. Ultimately, the question for the CJEU for a preliminary ruling was whether Nike Deutschland GmbH is an “establishment” for the purpose of Article 97(1)?

CJEU favours uniformity and broad interpretation

On 18 May 2017, the CJEU gave its preliminary ruling in which it emphasised heavily the necessity for an “autonomous” and “uniform” interpretation of the concept of “establishment”.

Next, the Court analysed the wording, context and objective of Article 97(1) EUTMR.

(i) Wording

The provision says in essence that infringement proceedings in EUTM matters are to be brought in “courts of the Member State in which the defendant is domiciled” or “has an establishment”.

It is apparent from the wording of the provision that a defendant, not domiciled in the EU, may have one or more establishments within the EU, which suggests that actions may be brought before the courts of various Member States where those establishments are located.

(ii) Context and objective

The Article aims to ensure that a court in the EU always has jurisdiction to hear and determine disputes concerning infringement of an EU trade mark. As such, Article 97(1) establishes the primary rule of domicile/establishment. Only if the defendant has no domicile, nor an establishment in an EU Member State, then do the subsequent provisions kick in. They would act as an alternative, which provides for jurisdiction to lie with the courts of the domicile or establishment of the plaintiff and, as a further alternative, with the courts of the Member State where EUIPO has its seat (Article 97(2) and (3)). These are designed in a somewhat cascade manner. So the concept of “establishment” should be interpreted broadly since this is not the exception to the basic rule of jurisdiction at the defendant’s domicile. This was a point also emphasised by the Advocate General.

Touching upon some of the facts of the dispute before it, the Court ruled that it is irrelevant whether a body has legal personality for the purpose of it being an “establishment”. What matters is that third parties are able to rely on the appearance created by the establishment acting as an extension of the parent body. Coming even closer to the peculiarities of the dispute, the Court considered irrelevant the fact that an undertaking is a second-tier subsidiary of a parent body with a seat outside the EU and not a direct one.

Eventually, such a second-tier subsidiary, with a seat in a Member State, of a parent body, without a seat in the EU, is an “establishment” of that parent body if there are visible signs that the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which a commercial activity is pursued, as manifested by the presence of personnel and material equipment and has the appearance of permanency to the outside world, such as an extension of the parent body.

Full judgment can be found here.

Alina Trapova LL.M. (QMUL)

Here we laugh again! The eternal controversy over parody scope in Copyright law

by federicapezza

Remix, mash-up, fan fictions and “other strange animals”:  welcome all to the taking from-era.The eternal tension between original creator property rights and guarantee of social interests in Copyright law, is becoming even more crucial nowadays, due to the increasingly common practice of elaborating and reinterpreting copyrighted material.

One of the latest issues comes from the US.

Again, a balance is required. This time, however, the bone of contention lies in the drawings of comic books. Here we go again my dear copyright lawyer! Well, here we laugh again, to be fair.

But first things first. Let’s have a look at the facts.

Comixmix has been sued by Dr Seuss Enterprises(DSE), the estate of late children’s author and illustrator Theodor Seuss Geisel, for trying to sell a book called Oh, The Places You’ll Boldly Go!, proposed on Kickstarter as a “mash-up” of Dr. Seuss and Star Trek. In particular, the plaintiff, in its formal complaint, alleges that the unauthorized publication of the book,” by using innumerable copyrighted elements” of the original and iconic Dr Seuss “Oh the Place You’ll Go” , presents a clear infringement of his copyright under the US Copyright Act s. 106. Further, it would also amount to a trademark infringement under the Lanham Act, due to the distinctiveness of Dr Seuss marks[1]. On the other side, the creators, although totally aware of the risks connected to their work, rely on the fair use defence under s. 107 of the US Copyright Act. [2]

Quite interestingly, the lawsuit follows another complaint, based on the same reasons, which has been filed by CBS and Paramount Pictures over another crowd-funded project — a professional-quality “fan film” titled Axanar[3].

But there is more.

What makes the dispute even more intriguing to the non-geeks is the fact that the plaintiff, Dr Seuss, had already been involved, a few years ago, in one of the US leading cases on Copyright Law and Fair Dealing. [4]In that instance the US Court, having to decide whether the “Cat NOT in the Hat “by Dr Juice constituted an infringing copy of Dr Seuss book “The Cat in the Hat”, found for the plaintiff, ruling out the justifiability of the work under the US fair use doctrine. In that occasion the court adopted a narrow[5] interpretation of parody notion, which excluded the applicability of the exception any time the new work, rather than targeting the previous one(target parody),made use of it as a weapon against society.

Thus, how can one draw the line between authorised fan fiction and infringing copy?        As always, when talking about copyright, the answer is not a straightforward one.Law changes, society evolves, judicial interpretation is subjective…

So keep calm and go back to your Marvel Comics, my dear copyright lawyer.  That’s the daily lesson: he who laughs last, laughs best.

Federica Pezza

Assistant Editor, QMJIP


 

[1] https://www.documentcloud.org/documents/3219155-Seuss-Suit.html

[2] Noticeably, on their webpage, anticipating the lawsuit, they already proclaimed While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, there may be some people who believe that this might be in violation of their intellectual property rights. And we may have to spend time and money proving it to people in black robes. And we may even lose that.”

[3] https://www.documentcloud.org/documents/2660454-Startreklawsuit.html

[4] DR SEUSS ENTERPRISES v. PENGUIN BOOKS USA INC http://caselaw.findlaw.com/us-9th-circuit/1384979.html

[5] For the developmets on the fair use defence in US look at Cariou v Prince where a broader notion of fair use based on the transformativeness of the work has been elaborated.

Bogus Buys: Trade marks and Counterfeiting

by Lisa D. Rhooms

Counterfeiting comes in many forms, and is nothing new in business or in the law of Intellectual Property. However, where counterfeit goods are becoming nearly imperceptible, they pose a real risk to the owners of the goods being “knocked off”, and the buyers who believe they are getting the real thing. In a recent press release from the Organization for Economic Cooperation and Development[1] about their new report[2], they found that:

“nearly one in five mobile phones and one in four video game consoles shipped internationally is fake, as the growing trade in counterfeit IT and communications hardware weigh on consumers, manufacturers and public finances…”[3]

Counterfeiting however, does not begin or end with IT or communications goods, as nearly every good can, and probably has been counterfeited.

Counterfeiting and the Trade mark- Confusion and Passing Off

Whether under United States (US), United Kingdom (UK) or European law, counterfeiting of a mark, particularly a famous trade mark, affects the mark, though the degree or harm may vary. The case of Hermes Intern v Lederer de Paris Fifth Avenue., Inc.[4] spells out skillfully, the harms that can arise where there is confusion because of the similarity of marks and goods, one counterfeit and one real. The judgment states:

“a loss occurs where a sophisticated buyer purchases a knock off and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knock off price… the creation of confusion in the post sale context can be harmful in that if there are too many knockoffs in the market, sales of the original may declines because the public is fearful that what there are purchasing may not be an original… the purchaser of an original is harmed by the widespread existence of knockoffs because the high  value of originals, which derives in part from their scarcity, is lessened.”[5]

This case looks at the harm in a post sale context, including the harm to owner of the mark, in terms of reduced sales, the fear of the prospective consumers that the goods they may be purchasing are fake, and the actual loss to owners of the goods due to a lack of scarcity. This case helps to illustrate the multifaceted harm counterfeiting can cause.

In the United Kingdom, even an unregistered trade mark is protected against counterfeiting by the law of passing off because of the harm it can cause to a trader. This is demonstrated in the case of Reddaway v Banham[6], where the judgement made clear that “nobody has any right to represent his goods as the goods of somebody else”[7]which is a clear shot at counterfeiting, as where there is passing off, there is harm, and when a trader commits passing off, he for all intents and purposes steals another trade’s patron and his reputation.

Counterfeiting and the Trade mark- Dilution

Another problem with counterfeiting is that it may cause dilution, which is a concept found in the US, UK, Europe and elsewhere. In the US, sections 43(c)(2)(b) and 43(c)(2)(c) of the Lanham Act relate to dilution by blurring, and dilution by tarnishment respectively. Dilution is a concept in respect of a famous trade mark, and dilution by blurring arises where the marks are so similar that the distinctiveness of the famous mark is impaired by the other mark. Cases such as Levi Strauss & Co v Abercrombie & Fitch Trading Co.[8] have determined that there need not even be an identity or substantial similarity of marks for there to be blurring, so a counterfeit item, intended to be a replica, would almost certainly cause dilution by blurring. Dilution by tarnishment arises where there is a similarity of the marks which gives rise to an association between the marks, and which harms the reputation of the famous mark. Thus, in the case of V Secret Catalogue inc, v Mosely[9], the court found that there was a rebuttable presumption of tarnishment where the famous mark was connected with sex products. Another scenario where tarnishment is possible is where the product, similar to one bearing the famous mark, is of poorer quality. Counterfeits are generally cheaper and of poorer quality than famous more expensive brands, and thus, a counterfeit good could very easily cause dilution by tarnishment. Again, in the UK, unregistered marks are protected by passing off, and dilution is a category of harm under passing off.

Conclusion

Counterfeiting is a sin against a genuine good as it can steal, kill and destroy. A counterfeit good can steal a customer from a trademarked brand, kill its reputation and destroy the business of the holder of the trade mark. Intellectual Property law, trade mark law in particular must therefore take serious steps in addressing counterfeiting through the policing of brands, bringing action against counterfeiters, and imposing other sanctions including heavy fine, and imprisonment. Trade mark law must be very careful, but also unyielding in disallowing bogus buys from hindering genuine products, and the resources which have gone into engineering them.

Lisa Diana Rhooms

Assistant Editor, QMJIP

[1] http://www.oecd.org/gov/trade-in-counterfeit-ict-goods-9789264270848-en.htm

[2] OECD (2017), Trade in Counterfeit ICT Goods, OECD Publishing, Paris.
DOI: http://dx.doi.org/10.1787/9789264270848-en

[3] Ibid 1

[4] 55 U.S. P.Q 2d 1360 (2nd Cir. 2000)

[5] ibid

[6] [1896] AC 199

[7] ibid

[8] 633 F.3 1158 (9th Cir. 2011)

[9] 605 F.3 382 (6th Cir. 2010)

May 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in May 2017. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM & IRELAND

  • 3 May – London – BLACA – The scope of “communication to the public” under EU law: is there still a borderline with indirect liability? Link.
  • 4 May – Glasgow – AIPLA – Women in IP Law EventLink.
  • 4-5 May – Glasgow – CREATe – Early Career Researcher Camp – Link.
  • 6 May – London – IAL – Study Forum in London – Link.
  • 8 May – Cambridge – CIPIL – Book Launch: Henning Grosse Ruse-Khan “The Protection of Intellectual Property in International Law”Link.
  • 9 May – London – CIPA & CITMA – Canadian IP and Patent Practice CPD Seminar – Link.
  • 9 May – Leamington Spa – LES Britain & Ireland – IP Strategy at Critical Points in the Life of a BusinessLink.
  • 9-10 May – London – Management Forum – The Formal Requirements of the European Patent SystemLink.
  • 10 May – Bournemouth – CIPPM – The Doctrine of Implied Licence and Copyright Balance Link.
  • 10 May – London – SCL – Big Data, AI, technology and the lawLink.
  • 10 May – London – IPSoc – Latest Developments in Copyright – Link.
  • 11 May – London – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Newport – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Edinburgh – MBL – Due Diligence on Intellectual Property – Link.
  • 11 May – Edinburgh – MBL – Intellectual Property in R&D Collaborations Link.
  • 11 May – London – QMUL – CCLS – The Intellectual Property CovenantLink.
  • 15 May – London – MBL – Copyright – Advanced Aspects Explored – Link.
  • 15 May – London – SCL – Renegotiation and DisputesLink.
  • 15 May – Bristol – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Manchester – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Oxford – FLJS – Free Speech: Ten Principles for a Connected World – Link.
  • 16 May – Oxford – Oxford University Intellectual Property Research Centre – Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016Link.
  • 16 May – London – IPR – Data Risk Management in Financial Services Summit – Link.
  • 16 May – London – CITMA – Copyright Law refresher – Link.
  • 16 May – London – Management Forum – The Impact of Patent Construction – How to Prove Infringement and ValidityLink.
  • 17 May – London – ALPSP – Understanding Copyright – Link.
  • 17 May – London – Bird&Bird – The Unified Patent Court Breakfast Seminar Series Link.
  • 17 May – Cambridge – CILIP – Getting to grips with Copyright and Open Access – Link.
  • 17-18 May – London – Management Forum – How to Avoid Common Pitfalls in Combined EU/US Patent ApplicationsLink.
  • 18 May – London – MBL – Taking Security over Intellectual Property – Link.
  • 18 May – Cambridge – CIPIL – ‘Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016 Link.
  • 18 May – Glasgow – CIPA – The Scotland Meeting 2017 – Link.
  • 18 May – London – Osborne Clark – Copyright in the digital environmentLink.
  • 18 May – Oxford – Oxford University Intellectual Property Research Centre – Trademarks and private governance – Link.
  • 22 May – Cambridge – MBL – All you need to know about the UK Patent BoxLink.
  • 22 May – Oxford – Assimilate IP – Freedom to Operate Link.
  • 22 May – Oxford – Assimilate IP – Introduction to Intellectual Property Link.
  • 23 May – Bristol – MBL – A practical guide to draft IT Contracts – Link.
  • 23 May – Manchester – MBL – Intellectual Property Law Update – Link.
  • 23-24 May – London – IQPC – Information Governance and eDiscovery SummitLink.
  • 26 May – Glasgow – CREATe – Copyright Innovation Network (CIN) LaunchLink.
  • 30 May – London – UCL – IP Licensing: An Advanced Level Drafting Workshop – Link.
  • 30 May – Bristol – MBL – Valuation of IP Rights, Intangible Assets & Goodwill Link.
  • 30 May – Oxford – Oxford University Intellectual Property Research Centre –Implied Licences in Copyright Law – Link.

CONTINENTAL EUROPE

  • 3 May – Paris, France – APEB – Tables Rondes Commission Innovation & RechercheLink.
  • 3-4 May – Munich, Germany – EPO – PATLIB 2017 Link.
  • 4 May – Porto, Portugal – SME IPR Helpdesk – The importance of IP in internationalization strategies: the case of Latin America Link.
  • 4 May – Strasbourg, France – CEIPI – Propriété intellectuelle et numérisation- Quels enjeux pour le management de la propriété intellectuelle?Link.
  • 4-5 May – Munster, Germany – Munster University – Trading Data in the Digital Economy: Legal Concepts and ToolsLink.
  • 5 May – Milan, Italy – Università Bocconi – Second-hand Markets for Digital Copies – An EU copyright chimera? – Link.
  • 5 May – Strasbourg, France – CEIPI – La jurisprudence européenne en propriété intellectuelle Link.
  • 7-9 May – Cascais, Portugal – ACC Europe – ACC Europe Annual Conference – Link.
  • 9 May – Basel, Switzerland – FORUM – FTO in Practice: Life Sciences & PharmaceuticalsLink.
  • 9-10 May – Munich, Germany – Pharmaceutical Patent Term ExtensionsLink.
  • 9-10 May – Luxembourg, Luxembourg – ICT – ICT Spring Europe 2017 – Link.
  • 9-10 May – Bucharest, Romania – WIPO – Sub-regional Seminar on Teaching Intellectual Property to the YouthLink.
  • 11 May – Strasbourg, France – CEIPI – Séminaire de préparation à l’examen français de qualification spécialisation «brevets d’invention» Link.
  • 11 May – Amsterdam, the Netherlands – Symposium on Copyright and Culture – Link.
  • 11-12 May – Munich, Germany – EPLIT – EPLIT’s 4th Annual MeetingLink.
  • 12 May – Paris, France – Sciences Po – Building a EU Unitary Copyright– Link.
  • 16 May – Paris, France – IRPI – Droit d’auteur et droits voisins – Link.
  • 16 May – Paris, France – LES France & YMC – La révolution ‘blockchain’ Link.
  • 16-17 May – Berlin, Germany – Marcus Evans – IT Governance Risk Compliance – Link.
  • 17 May – Paris, France – IRPI – Droit des marques et autres signes distinctifs – Link.
  • 16-18 May – Brussels, Belgium – Informa – EU Pharmaceutical Law Forum Link.
  • 17-19 May – Barcelona, Spain – IACC – IACC 2017 Annual Spring Conference – Link.
  • 17-19 May – Tilburg, the Netherlands – Tilburg University – Regulating a connected world – Link.
  • 17-20 May – Copenhagen, Denmark – ALAI – Copyright: to be or not to be?Link.
  • 18 May – Madrid, Spain – LES Spain – Caso práctico sobre protección y comercialización de secretos industriales y comerciales Link.
  • 18 May – Bern, Switzerland – AIPPI – AIPPI General Assembly and Swiss Day Link.
  • 18-19 May – Trier, Germany – ERA – Intellectual Property Enforcement and the Fight against Counterfeit Goods in the EULink.
  • 20-24 May – Barcelona, Spain – INTA – INTA 139th Annual Meeting – Link.
  • 22 May – Barcelona – EUIPO – TM5 Mid Term MeetingLink.
  • 25 May – Budapest, Hungary – Dentons – IP breakfast seminar on the present and future of collective rights managers Link.
  • 25 May – Bucharest, Romania – WIPO – National Seminar on Intellectual Property Protection and Enforcement Relating to the Automotive Spare PartsLink.
  • 30 May – Madrid, Spain – FIDE – Sociedad Digital- “Modelos de negocio digitales del siglo XXI regulados por marcos normativos analógicos del siglo XX – Link.
  • 30 May – Paris, France – FORUM – Gestion Stratégique de la Propriété Intellectuelle Link.
  • 31 May – Amsterdam, the Netherlands – FORUM – Quo Vadis, SPC? Link.
  • 31 May-1 June – Munich, Germany – EPO – Examination Matters 2017 – Link.
  • 31 May – Aci Castello, Italy – Union IP – Union Congress 2017 – Link.

USA & CANADA

  • 3 May – Seattle, WA, USA – Centerforce – IP Strategy – Link.
  • 4 May – Detroit, MI, USA – Global Business Media – IP In the Auto Industry Link.
  • 4 May – Sacramento, CA, USA – CLA – Common Trademark Issues Every Client Faces Link.
  • 5 May – Houston, TX, USA – USPTO – Lone Star Strategies for IP in China Link.
  • 5 May – L’Auberge del Mar, CA, USA – LAIPLA – LAIPLA Spring Seminar – Link.
  • 5 May – Chicago, IL, USA – John Marshall Law School – Ethics in the practice of Intellectual Property Law – Link.
  • 8 May – Stanford, CA, USA – Stanford Law School – The Unregulated Certification Mark(et)Link.
  • 8 May – Detroit, MI, USA – USPTO – Developments in trade secret protection – Link.
  • 8-9 May – Washington DC, USA – LES USA & Canada – Best Practices in Licensing: Developing, Negotiating & Executing Transactions Link.
  • 9 May – Boston, MA, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 9-12 May – Washington DC, USA – LES USA & Canada – LES Spring MeetingLink.
  • 10 May – Berkeley, CA, USA – CLA – Protecting Intellectual Property Rights in a Work-Made-for-Hire Economy – Link.
  • 10 May – Boston, MA, USA – Centerforce – IP Defense – Link.
  • 10-12 May – Palo Alto, CA, USA – IP Counsel Cafe – Where Are We in Eradicating Weak Patents? – Link.
  • 11 May – New York, NY, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 11 May – Vancouver, BC, Canada – LES USA & Canada – The European Unified Patent Court and Unitary Patent – What to ExpectLink.
  • 15 May – Ithaca, NY, USA – How to avoid pitfalls in IP deal making – Link.
  • 15 May – New York, NY, USA – CSUSA – Computing Machines Creating Protectable Works: The Future of Copyright?Link.
  • 16 May – Washington DC, USA – George Washington Law School – 2017 GW IP Law Symposium – Link.
  • 16 May – New York, NY, USA – Managing IP – PTAB Forum 2017 Link.
  • 17 May – Chicago, IL, USA – Centerforce – IP Defense – Link.
  • 17 May – Palo Alto, CA, USA – LES USA & Canada – Penny or a Pound: Apportioning Damages in Patent CasesLink.
  • 17 May – Montgomery, AL, USA – USPTO – Alabama Digital Governance Summit Link.
  • 17-18 May – Michigan, MI, USA – Michigan State University – The Ninth Annual Junior Scholars in Intellectual Property (JSIP) Workshop – Link.
  • 17-19 May – San Diego, CA, USA – AIPLA – AIPLA Spring Meeting 2017 Link.
  • 18 May – San Francisco, CA, USA – Global Business Media – The Software IP Summit – Link.
  • 18 May – San Jose, CA, USA – USPTO – Patent Brown BagLink.
  • 18-19 May – Mountain View, CA, USA – Berkeley Centre for Law and Technology & MLRC – Legal Frontiers in Digital Media 2017 Link.
  • 20-25 May – Atlanta, GA, USA – PIUG – PIUG 2017 Annual Conference – Link.
  • 23 May – Sacramento, CA, USA – CLA – Contract Basics for Creative Artists – Link.
  • 23 May – Chicago, IL, USA – CSUSA – Picture This: The “Monkey Selfie” and Granting Copyrights to Nonhuman Animals Link.
  • 23 May – San Jose, CA, USA – USPTO – Design Patent Brown BagLink.
  • 25 May – Stanford, CA, USA – Global Competition Review – GCR Live IP & Antitrust California – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 11 May – Sao Paulo, Brazil – ASPI – O Novo Cpc Em Seu Primeiro Ano De Vigência E A Propriedade IntelectualLink.
  • 17-19 May – Sao Paulo, Brazil – IBA – IBA 5th Biennial Technology Law Conference – Link.
  • 18-19 May – Sao Paulo, Brazil – SCL – Technology beyond the bounds: enterprise benefits and social and regulatory limitsLink.
  • 31 May – 2 June – Buenos Aires, Argentina – WIPO – Segundo Taller de Entrenamiento de la OMPI sobre información y búsqueda de patentes y la prestación de servicios de información de valor añadido para el personal de la Red Nacional de Centros de Apoyo a la Tecnología y la Innovación (CATI) de Argentina Link.

AFRICA, ASIA & OCEANIA

  • 4 May – Melbourne, VIC, Australia – ACC – Drafting IP Clauses: tips and tricks for in-house lawyersLink.
  • 9 May – Melbourne, VIC, Australia – IP Australia – Patent 101 for Startups – Link.
  • 9-12 May – Melbourne, VIC, Australia – LES Australia & New Zealand – 7th LES Asia Pacific conferenceLink.
  • 11 May – Melbourne, VIC, Australia – ACC – Protecting your brand in an online worldLink.
  • 17-18 May – Khartoum, Sudan – WIPO – National Seminar on Intellectual Property Policies for Universities and Research InstitutionsLink.
  • 25 May – Sydney, NSW, Australia – IP Australia – Patent 101 for StartupsLink.
  • 31 May-7 June – Nairobi, Kenya – ICANN – Africa Internet SummitLink.

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

Right (not) to be forgotten in the companies register – an update from the CJEU

by Alina Trapova

Although strictly speaking not an IP matter, the right to be forgotten has entertained IP “cousin” blogs, journals and academics. Hence, a little update from the data protection sector would not harm.

Mr Salvatore Manni (IT) was the sole director of the company Italiana Costruzioni Srl, responsible for the construction of a tourist complex in Italy. He brought an action against the Lecce Chamber of Commerce since the companies register revealed that he had been the administrator of another company (Immobiliare e Finanziaria Salentina Srl) which went bankrupt back in 1992. Mr Manni believed that this publicly available information was the reason why properties in the newly built tourist complex were not selling. Therefore, it should be deleted, anonymised or blocked from the register.

Basis for his claim was the so-called Google Spain case [1], which in essence says that individuals have the right under certain conditions to request search engines to remove links with personal information about them. For the right to be forgotten to kick in, that information should be inaccurate, inadequate, irrelevant or excessive, which was the case of Mr González where press articles discussed debt recovery proceedings in which he had been involved 16 years ago. Nevertheless, the right to be forgotten is far from absolute – it must be appropriately balanced with other fundamental interests such as freedom of speech. Inevitably, each case is assessed on its own merits.

Mr Manni was successful before the Court of Lecce (Tribunale di Lecce), which ordered the said information to be anonymised and compensation for the damage to be paid. The Lecce Chamber of Commerce was however unhappy with this outcome and appealed the case before the Court of Cassation (Corte suprema di cassazione), which in turn referred several questions to the CJEU. In essence it asked whether the Directive on protection of personal data [2] and the Directive on disclosure of company documents [3] preclude the public from accessing, without any time limit, data relating to natural persons set out in the companies register.

In a judgment of 9 March 2017 (C-987/15) the CJEU was less sympathetic to Mr Manni than the Tribunale di Lecce. It outlined the important role of the public companies register, i.e. safeguarding interests of third parties in relation to joint stock companies and limited liability companies. The Court also emphasised that it was not possible to specify the period after which the retention of this personal information would no longer be necessary.

It acknowledged that such retention of personal information long after the dissolution of a company interferes with fundamental rights, i.e. the respect for private life and the right to protection of personal data, both enshrined in the Charter of Fundamental Rights of the European Union. Yet such interference is not disproportionate as only limited data is entered on the company register and is nevertheless justified since natural persons who choose to set up joint stock company or limited liability company are to disclose data relating to their identity and functions within that entity.

However, there is a caveat – in specific situations after a sufficiently long period following the dissolution of the company in question there might be overriding and legitimate reasons justifying the limitation of access to that personal data (of course, relating to the specific case at hand). As usual, this limitation is applied on a case-by-case approach and it is up to each Member State to decide whether to adopt it.

In the present case, the legitimate interest of third parties in having access to the information in the companies register was vital and the mere fact that properties of a tourist complex do not sell as potential purchasers have access to Mr Manni’s data in the companies register was insufficient to outweigh it.

 Comment

Italy is a beautiful country (proof here, here, here, etc.), so the blame-shifting attempt about not selling the properties did not play to Mr Manni’s benefit on this occasion. Every time expressions such as “balancing against other fundamental rights”, “a case-by-case assessment” and “specific situations” crop up, one has the feeling that legal certainty quietly leaves the room. Well, it is safe to say that in the 65 paragraphs of this CJEU preliminary ruling no such ambiguity was left. After all, the companies register is not equivalent to Google Search.

Full judgment can be found here.

Alina Trapova LL.M. (QMUL)

[1] Google Spain SL, Google Inc. v Agencia Española de Protección de Datos, Mario Costeja González, Case C-131/12.

[2] Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995, L 281, p.31).

[3] First Council Directive 68/151/EEC of 9 March 1968 (OJ 1968, L 65, p.8), as amended by Directive 2003/58/EC of the European Parliament and the Council of 15 July 2003 (OJ 2003, L 221, p. 13).

An apple a day…keeps competitors away

by Alina Trapova

Pear Technologies Limited applied to register  Pear Technologies as an EUTM for computers, software, maintenance of computer software, etc. in Classes 9, 35 and 42. Apple Inc. opposed the application based on, inter alia, EUTM No. 9 784 299 Apple , registered for the unsurprisingly long list of goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45. Importantly, reputation was claimed for, among others, goods/services in the here contested Classes 9, 35 and 42. The grounds of opposition were those laid down in Articles 8(1)(b), 8(4) and 8(5) EUTMR, whereby Article 8(5) was the focal point of analysis for both EUIPO instances.

EUIPO’s Opposition Division upheld the opposition based on Article 8(5) EUTMR. Apple’s reputation, the identity/similarity of the goods and services and the potential harm in the form of unfair advantage were far from problematic to prove here. What is more intriguing is the signs’ comparison analysis.

comparison of signs

One must be recalled that for an Article 8(5) reputation-based opposition the threshold for signs’ similarity is lower than the one required for confusing similarity oppositions under Article 8(1)(b). In the present case, similarity leading to association is sufficient. In those lines, according to the Opposition Division, the signs were similar for the purpose of Article 8(5) as “the figurative element of the pear in the contested sign has graphical features which are similar to those of the earlier mark, and it will be associated with the concept of a pear, which is related to the concept of an apple.”

The 5th Board of Appeal in a decision of 18 January 2017 (R 860/2016-5) was not sympathetic to Pear Technology Limited and dismissed its appeal action. Apple’s overwhelming reputation is indisputable, so the numerous exhibits substantiating its strong market position are rather uninteresting from a trade mark perspective. The same goes for the comparison of the goods and services as it was rather straightforward for the Board to establish identity/similarity.

It was the comparison of signs which was rather more noteworthy.

Having reinstated the principles related to Article 8(5) the Board emphasised once more that “where there is no similarity between the marks at issue, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient grounds for finding that there is a likelihood of confusion between the marks at issue or that the relevant public will make a link between them”. So, key here was to determine whether some similarity existed between the two signs.

In the Board’s view, visually the two signs depict a piece of fruit including a stalk/leaf. The differences are acknowledged, namely the word ‘PEAR’, the missing ‘bite’ taken out of the contested sign and the various black rectangular shapes within the contested sign. However, the following similarities hinted to the outcome the Board was headed for:

  • A leaf, even though different in shape, is placed in a similar position on both signs and is in fact in both signs oriented right at 45% and clearly detached from the fruit.
  • The figurative elements in the contested sign, positioned centrally, are dominant as the word “PEAR” is smaller, in a faded font and therefore considered secondary. Besides, it reinforces the figurative elements and creates a semantic unit.
  • Both signs depict sleek rounded silhouettes of a fruit, whereby “the abstract stylisations of the silhouettes are similar.”

Conceptually, a pear and an apple even though two distinguishable fruits, will be associated to one another.

Eventually, the Board acknowledged that the marks are only slightly similar and that “admittedly, there are some mental steps involved in the perception of the consumer”, but “because of the uniqueness and high reputation of the earlier mark the contested sign’s allusive, somewhat mocking image of the ‘pear’ will trigger and establish a mental ‘link’ with the earlier ‘Apple’ logo”

As a result, the contested sign can be associated with the earlier mark and in view of the identity of the goods and services it is capable of taking unfair advantage of Apple’s well-established reputation and the considerable investment undertaken by Apple to achieve that reputation.

Comment

Reputation, reputation, reputation. These are the words that echo even when one reads parts of the decision on entirely different norms, such as the comparison of signs. The decision should be approached with caution and in that sense looked at with the following peculiarity in mind – the opponent was not just anyone, but Apple Inc. and that should not be taken lightly by competitors.

Alina Trapova LL.M. (QMUL)

QMJIP – Volume 7 – Issue 1 (April 2017)

by Giancarlo Moretti

The last issue of QMJIP has been released (Volume 7 – Issue 1). The table of content reads as follows:

  • Editorial – J Gibson
  • Making patents work: of IP duties and deficient disclosures – S Basheer
  • Whither China’s protection of geographical indications? A case study of Qinzhouhuang Millet – Z Xiaoping
  • Protection of ‘handicraft’ as geographical indications under municipal law, TRIPS and BTAs vis-à-vis CETA: ‘Bangladeshi Jamdani’ as case study – M A Karim & M E Karim
  • Control or promote? China’s cultural censorship system and its influence on copyright protection – T He
  • Minutes of Evidence of the Select Committee on the Letters Patent for Invention Act 1835 – P Johnson
  • Metall auf Metall’ – the German Federal Constitutional Court discusses the permissibility of sampling music tracks Bunderverfassungsgericht BVerfG 1 BvR 1585/13 – ‘Metall auf Metall’ – M D Mimler
  • Book Review – M Iljadica
  • Book Review – R Sciaudone

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti