QMJIP

Queen Mary Journal of Intellectual Property

Category: Uncategorized

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

Latest news from WTO: amendment on TRIPS patent compulsory licensing finally entered into force

by Giancarlo Moretti

On Monday 23 January, after more than a 11-year waiting, the amendment on the current regime on patent compulsory licensing eventually entered into force. The protocol amending the Agreement has required the acceptance of two third of WTO member countries before taking effect. As remarked by the official statement, this process has been boosted during the last two years, with the deposit of instruments of acceptance by 37% of the members. The contracting parties that have not accepted the amendment yet are still bound to the waiver decided in 2003.

As for the substance, new Article 31bis allows now compulsory licenses for pharmaceutical products to be exported to countries with insufficient or no manufacturing capacity. This provision derogates the requirement of Article 31(f) of the TRIPS Agreement[1], according to which the issuing of a compulsory licensing ‘shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use’.

The discussion about Article 31 (f) and the connected limitation for developing and least-developed countries emerged during the Doha Round. The ‘Declaration on the TRIPS agreement and public health’ recognised the difficulties related to the exploitation of this TRIPS flexibility. In order to tackle this issue, before the amendment signature in 2005, a waiver allowing compulsory licensing for exportation of drugs was adopted in 2003. So far, it has been applied just in one case, with Canada issuing a compulsory licensing in favour of Rwanda for the exportation of anti-retroviral drugs for AIDS.[2]

Despite the discussions occurred last year at UN[3] and WTO,[4] the new amendment could be considered a major step ahead in assuring access to essential medicines to countries with no manufacturing capacity. Indeed, setting up and developing infrastructures that could be able to produce generic drugs may require a long period of time. The new instrument waive Article 31(f) as for the requirement of production for domestic market, but at the same time it provides for adequate remuneration to be be paid to patent holders in accordance with Article 31(h). Except paragraph (f), all the other parts of Article 31 are applicable, in order to try to struck a balance between the interests of the different actors involved.

Eventually, given the partial failure of 2003 waiver, it cannot be predicted if this amendment will be able to provide an efficient tool for addressing the issue of access to medicine. The results will be clearer in the upcoming years. In any case, it can be considered a partial victory for developing and least-developed countries, that could rely on a further flexibility in order to grant effective access to essential life-saving drugs.


 

[1] WTO Agreement on Trade-Related Aspects of Intellectual Property Rights.

[2] For a comment see J. Gibson, Intellectual Property, Medicine and Health Current Debates (Ashgate 2009) 154-156.

[3]See  http://www.unsgaccessmeds.org/#homepage-1.

[4] See https://www.wto.org/english/news_e/news16_e/trip_08nov16_e.htm.

 

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

November 2016 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in November 2016. 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

  • 1 November – Oxford – Oxford Intellectual Property Research Centre – Protecting Authors’ Rights through Human Rights Rationales: A Latin American comparative perspective Link.
  • 2 November – Glasgow – CREATe – CREATe Public LectureLink.
  • 2 November – London – CIPA – The 818th Ordinary General Meeting of the Chartered Institute – Link.
  • 2 November – London – ITMA – Women in IP – Launch eventLink.
  • 3 November – Bournemouth – CIPPM – Is there a European future for UK Intellectual Property Law- Link.
  • 3 November – London – ITMA – 2016 ITMA Seminar for Litigators Link.
  • 3 November – London – CCLS – Systemic Implications of the Enhanced Patent Cooperation Link.
  • 3 November – Oxford – Oxford Intellectual Property Research Centre – The Propertisation of Trade Mark Law – Link.
  • 7 November – London – QMUL-CCLS & IPKey – EU-China Intellectual Property Forum: Preparing for Opportunities, Responding to Challenges Link.
  • 7 November – London – UCL – Drafting Clearer Contracts – Link.
  • 7 November – Southampton – iCLIC – It’s too complicated: How the Internet upends Katz, Smith, and electronic surveillance law – Link.
  • 8 November – Glasgow – CREATe – Copyright and Creation Link.
  • 8 November – London – MBL – A to Z of Intellectual Property Law – Link.
  • 8 November – London – Music tank – Rock ‘n’ Roll Disasters & What They Taught Me
    Read –
    Link.
  • 9 November – London – Osborne & Clarke – Commercialising your IP assets in the Life Sciences sector – Link.
  • 8 November – Manchester – ITMA – CJEU and General Court decisions 2016Link.
  • 9 November – Bournemouth – CIPPM – Opening PANDORA’S BOX: bridging the gap between film preservation and IP Link.
  • 9 November – Leeds – MBL – ‘Brexit’ – The Implications for European Trade Marks & Community Designs Link.
  • 9 November – London – FBLIP – Food And Beverage Law and IP – Link.
  • 10 November – Glasgow – CREATe – Open Innovation Design Jam – Link.
  • 10 November – Cambridge – BLACA & CIPIL – News and Copyright – Link.
  • 10 November – London – SCL – Advising in a time of technological change – Link.
  • 10 November – London – Taylor & Wessing – The British Fashion Council Fashion Trust & Taylor Wessing Seminar – Link.
  • 11 November – London – LES Britain and Ireland – The New Lambert Agreement Seminar Link.
  • 14-15 November – London- CIPA – The 2016 Life Sciences Conference – Link.
  • 15 November – London – Bird&Bird – Annual TechLaw Day 2016Link.
  • 15 November – London – UCL – IP Licensing: An Advanced Level Drafting WorkshopLink.
  • 15 November – Edinburgh- UK IPO – Intellectual Property: the Value within – Link.
  • 16 November – London – CIPA & UCL – Do Patents have a ‘Chilling Effect’ on the Incentives for Research and Development?Link.
  • 16 November – London – UCL & IBIL – Annual Innovation Panel – Link.
  • 18 November – London – MBL – Patent Court Litigation – Link.
  • 21 November – London – CIPA – Patent Case Law – Link.
  • 22 November – London – CCLS – Introduction to US Intellectual Property Law Research – Link.
  • 23 November – London – UK IPO – Enforcing IP on a Budget Link.
  • 23 November – London – Management Forum – Advanced Drafting Techniques for Successful EPO Patent Applications – Link.
  • 24 November – London – Bond Dickinson – Why were Trunki sent packing again? (and other recent developments in IP Law)Link.
  • 24 November – London – Bird& Bird – 2016 Annual IP SeminarLink.
  • 24 November – Manchester – ITMA – Recent developments on online blocking Injunctions and colour TMsLink.
  • 24 November – Oxford – OIPRC – Copyright and Course Packs: A Collision of Competing Values? – Link.
  • 28 November – London – Assimilate IP – Freedom to Operate for the Engineering Industries – Link.
  • 28 November – London – CIPA –CIPA/ITMA New Student Induction Day – Link.
  • 28 November – Bristol – CIPA – Patent Case Law – Link.
  • 29 November – London – UCL – Drafting and Negotiating Contracts with Universities Link.
  • 28-29 November – London – IBC Legal – International Copyright Law 2016Link.

CONTINENTAL EUROPE

  • 1 November – Helsinki, Finland – IPR – The Logistic of Ideas – Link.
  • 3 November – Strasbourg, France – CCI Alsace – Brexit – Consequences pour la PI Link.
  • 3 November – Munich, Germany – IAM – Pharma and Biotech IP Summit – Link.
  • 3 November – Madrid, Spain –EPO – PCT at EPO – Link.
  • 5 November – Amsterdam, the Netherlands – Vrije University – Selected Problems of the EU Trademark Law Reform Link.
  • 7-8 November – Paris, France –Dennemayer – Dennemayer Annual Meeting – Link.
  • 7-9 November – Cologne, Germany – BIO Europe – 22nd Annual International Partnering Conference – Link.
  • 8-10 November – Madrid, Spain – EPO – Patent Information Conference 2016 – Link.
  • 9 November – Amsterdam, the Netherlands – FORUM – Patent Due DiligenceLink.
  • 10 November – Paris, France – ASPI – Droit des Brevets – Link.
  • 10 November – Basel, Switzerland – University of Basel – IP Protection of Biological Inventions – Link.
  • 10 November – Geneva, Switzerland – WIPO – Conference on IP Dispute Resolution in Life Sciences – Link.
  • 10-11 November – Amsterdam, the Netherlands – FORUM – Supplementary Patent Certificates – Link.
  • 10-11 November – Stockholm, Sweden – IRI – The XXXI Nordic Conference on Law & IT Link.
  • 14 November – Berlin, Germany – GRUR & OUP – (Non-)Regulation of online platforms and internet intermediaries: state of play, visions, and next steps in Germany, UK, the Netherlands and at EU level – Link.
  • 14-15 November – Berlin, Germany – IQPC – Brand Protection & Anti-Counterfeiting – Link.
  • 15-16 November – Brussels, Belgium – CREATe – EU Hackathon – Link.
  • 15-16 November – Munich, Germany – IQPC – IP Life Sciences Exchange – Link.
  • 16 November – Zagreb, Croatia – Zagrebački Velesajam – INOVA – Link.
  • 17 November – Brussels, Belgium – Bird&Bird – Sample Management, Biobanking and Clinical Trials Link.
  • 17 November – Paris, France – FNDE – Droit du Numérique – Link.
  • 17-18 November – Trier, Germany – ERA – Annual Conference on European Copyright Law 2016 – Link.
  • 17-18 November – Vienna, Austria – Fleming – 4th Annual Open Innovation – Life Science, Pharma & BiotechLink.
  • 17-18 November – Amsterdam, the Netherlands – Marcus Evans – 10th Pan-European Conference in the P2P Series – Link.
  • 22 November – Anwtwerp, Belgium – Bird&Bird – Pharmaceutical Law Seminar – Link.
  • 22 November – Amsterdam, the Netherlands – FORUM – EU Design Law – Link.
  • 22 November – Basel, Switzerland – FORUM – Pharma IP Management – Link.
  • 22-23 November – Sofia, Bulgaria – WIPO – National Seminar on Copyright in the Digital Age – Link.
  • 23-24 November – Munich, Germany – EPO – Boards of Appeal and Key Decisions – Link.
  • 23 November – Amsterdam, the Netherlands – FORUM – Design Protection in China – Link.
  • 24 November – Amsterdam, the Netherlands – FORUM – International R&D – Link.
  • 24-25 November – Amsterdam, the Netherlands – FORUM – The Patent Roadmap – Link.
  • 24-25 November – Geneva, Switzerland – WIPO – Seminar on Intellectual Property and Traditional Knowledge – Link.
  • 24-25 November – Geneva, Switzerland – WIPO – Seminar on the Practical Aspects of the Madrid System for the International Registration of Marks – Link.
  • 24-25 November – Helsinki, Finland – IPR – Unfair Competition within (and beyond) IP ­– Link.
  • 24 November – Lyon, France – ASPI – Droit des Brevets – Link.
  • 24 November – Madrid, Spain – FIDE – Análisis de las Reclamaciones internacionales de inversión presentadas por Philip Morris contra Uruguay y Australia Link.
  • 26 November – Bologna, Italy – EPO – PCT at the EPO – Link.
  • 29 November – 1 December – Basel, Switzerland – FORUM – IP Strategy! – Link.
  • 29-30 November – Frankfurt, Germany – IICE – Information Management & Information Compliance – Link.
  • 30 November – Brussels, Belgium – INTA – Internet and the Rights HolderLink.
  • 30 November – Milano, Italy – EUIPO – DesignEuropa Awards – Link.

USA & CANADA

  • 1 November – Baton Rouge, LA, USA – USPTO – Patent and Trademark SeminarLink.
  • 2 November – San Diego, CA, USA – AIPF – Protecting your IP overseas Link.
  • 2 November – Washington DC, USA – George Washington Law School – IP Speaker Series: Stephen YeldermanLink.
  • 2 November – Whitewater, WI, USA – LES US&Canada – IP Business Basics 101 – Link.
  • 3 November – Bloomington, IN, USA – Maurer School of Law – IP Colloquium: Lisa P. Ramsey – Link.
  • 3 November – Los Angeles, CA, USA – CLA – Navigating the Legal Side of the Entertainment Business, the Right Way: Immigration & Contract DealsLink.
  • 3 November – Boston, MA, USA – CenterForce – The IP Strategy Summit: DefenseLink.
  • 3 November – Toronto, ON, Canada – LES US&Canada – IP Valuation: Options for Determining Value in Today’s Global Innovation Economy Link. ottom of Form

 

  • 3-4-November – Washington DC, USA – BIO – BIO Patient and Health Advocacy Summit Link.
  • 4 November – Los Angeles, CA, USA – LAILPA and Loyola Law School – TechTainment 2.0: Technology + Entertainment Link.
  • 4 November – Salt Lake City, UT, USA – AIPF – Protecting your IP overseas Link.
  • 4 November – Washington DC, USA – LES USA&Canada – IP Update: developments in Europe – Link.
  • 8 November – Chicago, IL, USA – CenterForce – The IP Landscape Has Changed: But Has Your Strategy?Link.
  • 8 November – Palo Alto, CA, USA – USPTO – Trademark Tuesday – Link.
  • 9 November – Cleveland, OH, USA – INTA – Young Practitioners and Trademark Administrators Reception and Roundtable – Link.
  • 9 November – Philadelphia, PE, USA – The Copyright Society of the USA – Star Athletica v. Varsity Brands: Separating the Useful and the Aesthetic for Copyright Protection Link.
  • 9 November – Santa Monica, CA, USA – CLA – Understanding Music Royalties and Copyright for Attorneys – Link.
  • 10 November – Boston, MA, USA – The Copyright Society of the USA – Public Art, Activism and Intellectual Property Link.
  • 10-11 November – Santa Monica, CA, USA – The State Bar of California – IP Section – IP On the American Riviera – Link.
  • 11 November – Québec City, QC, Canada – LES USA&Canada – Assurance en propriété intellectuelle: utile et rentable Link.
  • 15 November – Washington DC, USA – IAM – Patent Law & Policy 2016 – Link.
  • 15 November – Palo Alto, CA, USA – CenterForce – The IP Landscape Has Changed: But Has Your Strategy?Link.
  • 15-18 November – Hollywood, FL, USA – INTA – Leadership meeting – Link.
  • 16 November – Berkeley, CA, USA – CLA – Publishing Law 101: What Every Author MUST Know Before Getting Published – Link.
  • 17 November – New York, NY, USA – The Copyright Society of the USA – Donald C. Brace Memorial LectureLink.
  • 18 November – Dallas, TX, USA – USPTO – Spanish IP SeminarLink.
  • 24 November – Portland, OR, USA – Lewis&Clark Law SchoolHitting Refresh: Intellectual Property Rights and the Internet – Link.
  • 30 November – Palo Alto, CA, USA – Managing IP – European Patent Reform Forum – Link.
  • 30 November – 2 December – Philadelphia, PE, USA – IPQC – Pharmaceutical Packaging and Labeling Forum – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 13 September – Sao Paulo, Brazil – ASPI – Contratos e Parcerias sob a Lei Brasileira de Inovação – Oportunidades e Riscos – Link.

AFRICA, ASIA & OCEANIA

  • 1 November – Seoul, South Korea – CREATe – 2016 Seoul Copyright Forum – Link.
  • 3 November – Perth, WA, Australia – ACC Australia – IP Litigation – the real costs to your business and how best to manage itLink.
  • 8 November – Sydney, NSW, Australia – ACC Australia – Cyber Resilience Session Link.
  • 10 November – Melbourne, VIC, Australia – IAM – IPBC Australasia – Link.
  • 9-11 November – Tokyo, Japan – Japan Institute for Promoting Invention and Innovation, Japan Patent Information – Patent Information Fair & Conference – Link.
  • 11 November – Singapore, Singapore – IP Academy – Recent trends of IP Laws in Japan & Singapore – Link.
  • 14-15 November – Shenzen, China – Berkeley Centre for Law & Technology – The 5th Annual US-China IP Conference: Intellectual Property and Economic TransformationLink.
  • 15-16 November – Sydney, NSW, Australia – Australian Government & OECD – IP Statistics for Decision Makers – Link.
  • 17-18 November – Shangai, China – YIP – China Pharma Intellectual Property Summit 2016Link.
  • 20-22 November – Hong Kong – APCA – APCA Conference 2016 – Link.
  • 22 November – Sydney, NSW, Australia – University of Melbourne – What does a good IP system look like Link.
  • 24 November – Perth, WA, Australia – University of Melbourne – What does a good IP system look like – Link.

 

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

June 2016 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in June 2016. 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 June – London – CCLS QMUL – Queen Mary Postgraduate Legal Research Conference 2016 – Link.
  • 6-7 June – London – IIPLA – Iipla 2Nd Global Ip Summit 2016 Link.
  • 7 June – London – The British Library – Intermediate guide to copyright – Link.
  • 8-9 June – Glasgow – CREATe – CREATe Academic Symposium & Exhibition on Copyright and Cultural MemoryLink.
  • 9 June – London – Osborne Clarke – PSD2 – Scope – Changes to the exemptions and its impact- Link.
  • 9 June – London – Taylor Wessing – Annual Life Sciences In-house Counsel ForumLink.
  • 9-10 June – London – IFCLA – IFLCA Conference 2016 – Link.
  • 10 June – London – CIPA – EPO Oral Proceedings – Link.
  • 10 June – Leeds – MBL – Intellectual Property Rights in Software – Link.
  • 10 June – London – QMUL & UAM – Intellectual Property Event – Contemporary Developments in IP Law : CCLS and UAM Conference June 10 2016.
  • 13 June – London – CIPA & AIPLA – Diversity in IP – Link.
  • 13 June – London – FICP, CIPA & ITMA – US IP Law and Practice – Link.
  • 13 June – London – ITMA – Breakfast Meeting with ITMA – Link.
  • 13 June – London – ITMA – US IP Law & Practice – Link.
  • 14 June – Bristol – IPO&ITMA – IPO&ITMA Roadshow – Link.
  • 13 June – London – MBL – Advanced Trade Marks: Adwords & More Link.
  • 14-15 June – Ireland – IQPC – Pat-Tech Exchange – Link.
  • 15 June – London – ITMA – ITMA Administration Session #1 – Link.
  • 16 June – London – MBL – All you need to know about the IP Patent Box – Link.
  • 16-17 June – London – Management Forum – Advanced PCT Formalities – Link.
  • 19-23 June – Newport – FICPI – FICPI American-Canadian-British ConferenceLink.
  • 20 June – London – Osborne Clarke – ADTech in 2016 Link.
  • 22 June – London – ALPSP – Understanding Copyright – Link.
  • 22 June – London – Bristows – Understanding blockchain: hype or game-changing technology?
  • 22 June – London – Bristows – Robotics: Future Technologies today – Link.
  • 22 June – London – UCL IBIL – Annual Sir Hugh Laddie Lecture
  • 22 June – London – ACID & Boult Wade Tennant – ACID & Boult Wade Tennant IP Seminar and Drinks Link.
  • 22 June – London – London Technology Week – London Technology Week – growing pains: from startup to scale-up – Link.
  • 23 June – London – Managing IP – IP in Asia Forum 2016 Link.
  • 23 June – Leeds – Bristow – IP Licensing & EU Competition Law – Link.
  • 23 June – London – CIPA – Patent Litigation in the United States – Link.
  • 23 June – London – LES Britain & Ireland – LES Annual Conference & AGM – Link.
  • 23 June – London – Practical Law – Life Science Law Forum Link.
  • 24 June – London – CREATe – CREATe FestivalLink.
  • 24 June – London – MBL – Copyright in new mediaLink.
  • 24 June – Southampton – MBL – Intellectual Property Rights in Software – Link
  • 27 June – London – Assimilate IP – Freedom to Operate for the Life Sciences and Pharmaceutical Industries Link.
  • 27 June – Leeds – MBL – All you need to know about the IP Patent Box – Link
  • 28 June – London – ITMA – London Evening Meeting – Link.
  • 28 June – London – Osborne Clarke – PSD2: Where are we now? – Link.
  • 29 June – London – Union IP – Union IP Summer Event – Link.
  • 29 June – London- Osborne Clarke – Copyright, online content and the Commission’s Digital Single Market initiative – Link.
  • 29 June – 1 July – London – ND – New Designers – Part I – Link.
  • 30 June – London – QMUL SIA & WIPO – SEP/FRAND Mediation and arbitration – Link.

CONTINENTAL EUROPE

  • 2 June – Barcelona, Spain – OEPM – Conferencia inaugural BDW 2016 – Link.
  • 5-7 June – Barcelona, Spain – IPBC – 2016 IPBS GlobalLink.
  • 6 June – Madrid, Spain – LES Spain&Portugal – El dictamen pericial sobre infracción y validez de patente: consejos formales, metodológicos y prácticos Link.
  • 7 June – Paris, France – WIPO – WIPO Roving Seminar – Link.
  • 7-8 June – Eindhoven, The Netherlands – Bird&Bird – Internet of Things – Link.
  • 8-9 June – Tirana, Albania – WIPO – WIPO National Workshop for Law Enforcement Officials on Building Respect for Intellectual PropertyLink.
  • 8 -10 June – Ilmenau, Germany – PATON – Kolloquium der Technischen Universität Ilmenau über Patentinformation Link.
  • 8-10 June – Dubrovnik, Croatia – EGA – Joint 22nd Medicines for Europe and19th IGBA Annual Conference Link.
  • 8-10 June – The Hague, The Netherlands – EPO –Search Matters 2016 Link.
  • 9 June – Munchen, Germany – FORUM – Post-grant procedures at USPTOLink.
  • 9 June – Sabadell, Spain – OEPM- Jornada sobre la Protección de la CreatividadLink.
  • 9 June – Lille, France – WIPO – WIPO Roving Seminar – Link.
  • 9 June – Madrid, Spain – OEPM – Conferencia: Arbitraje y mediación en el sector de las TIC, Estándares de Patentes y licencias FRANDLink.
  • 9-10 June – Brussels, Belgium – WIPO – Training Seminar – Mediation in Disputes on R&D and Related Commercial AgreementsLink.
  • 10 June – Stockholm, Sweden – INTA – Young Practitioners & Trademark Administrators Reception: Challenges of a Digital WorldLink.
  • 12 June – Boston, Massachusetts, USA – Copyright Society USA – Annual meeting – Link.
  • 12 June – Boston, Massachusetts, USA – Copyright Society USA – International Chapter Lunch | Beyond Notice & Takedown: Liability Regimes to Address Online Piracy – Link.
  • 13 June – Barcelona, Spain – Marcus Evans – Industrial Design & Innovation Summit 2016 Link.
  • 13-14 June – Montreaux, Paris – Marcus Evans – IP Law Europe Summit 2016 – Link.
  • 14 June – Paris, France – ASPI – PI et MédicamentsLink.
  • 14 June – Paris, France – ASPI – Licenses Frand Link.
  • 14-15 June – The Hague, The Netherlands – EPO – Examination MattersLink.
  • 15 June – Brussels, Belgium – GRUR – 7th GRUR meets Brussels Workshop – link.
  • 16 June – Madrid, Spain – ABG – IP Perspective II – Link.
  • 16 June – Brussels, Belgium – ERA – The adoption of the EU Directive on Trade Secrets – Link.
  • 16 June – Madrid, Spain – FIDE – Cuestiones actuales en materia de diseño industrial: reflexiones para una reforma legalLink.
  • 16 June – Amsterdam, the Netherlands – FORUM – Patent Intelligence – Link.
  • 16-17 June – Munich, Germany – Managing IP – MIP Euro Law Conference 2016 – Link.
  • 16-17 June – Amsterdam, the Netherlands – FORUM – Licensing Link.
  • 20 June – Bonn, Germany – UCLA – UCLA School of Law Information Session: Bonn, Germany – Link.
  • 21 June – Paris, France – Managing IP – IP in Asia Forum 2016 Link.
  • 21 June – Lisbon, Portugal – IPR Helpdesk – UE- América Latina: Desafios na Área da Inovação e da TecnologiaLink.
  • 21-24 June – Valladolid, Spain – 19th International Conference on Cultural Economics – Link.
  • 22-25 June – Dubrovnik, Croatia – ECTA – 35th ECTA Conference – Link.
  • 23 June – Munich, Germany – IBC – Biotech & Pharmaceutical Patenting Conference Link
  • 23 June – Geneva, Switzerland – WIPO – WIPO on the Hague System for the International Registration of Industrial DesignsLink.
  • 23-24 June – Munich, Germany – IBC – Biotech & Pharma Patenting Conference 2016Link.
  • 24 June – Munich, Germany – TUM – Munich International Patent Law ConferenceLink.
  • 24 June – Paris, France – LIDC – Robotics and the Law – Link.
  • 27 June – 8 July – Strasbourg, France – CEIPI – Summer School on IP in Europe – Link.
  • 27 June-1 July – Trier, Germany – ERA – Summer Course on European Intellectual Property LawLink.
  • 30 June – Frankfurt, Germany – Dentons – IT Business Breakfast – Link.

USA & CANADA

  • 6 June – Stanford, CA, USA – Stanford Law School – 13th Annual Stanford E-Commerce Best Practices ConferenceLink.
  • 6-9 June – San Francisco, CA, USA – BIO – 2016 BIO International Convention – Link.
  • 7 June – Washington, DC, USA – CenterForce – IP Summit Strategy – Link.
  • 7 June – Chicago, IL, USA – IPLAC – Cuozzo Speed Technologies—Broadest Reasonable Interpretation
  • 7 June – Durham, NC, USA – LES USA&Canada – Duke Angel Network and other University Affiliated Angel Groups Link.
  • 8 June – Alexandria, VA, USA – USPTO – The economic contribution of technology licensing – Link.
  • 9 June – Chicago, IL, USA – John Marshall Law School – IP CLE Lunch & Learn SeriesLink.
  • 9-10 June – Arlington, VA, USA– AIPLA – 8th Annual Trademark Boot CampLink.
  • 10-12 June – San Coronado Bay, CA, USA – LAIPLA – Spring Conference 2016 – Link.
  • 10 June – Ottawa, Ontario, CA – LES USA&Canada – 2nd Pan-American LESI YMC Event Link.
  • 13 – 14 June – Berkeley, CA, USA – Berkeley Centre for Law and Technology – The 15th Annual Workshop on the Economics of Information SecurityLink.
  • 14 June – Portland, OR, USA – AIPLA – AIPLA 2016 Electronic & Computer Patent Law SummitLink.
  • 14 June – Santa Monica, CA, USA – CLA – Art World 2016: Bankruptcy, Art Consignment, and Resale Royalty 1.5 credits MCLE Link.
  • 15 June – Alexandria, VA, USA – AIPLA & USPTO – Bench and Bar Conference – Link.
  • 15 June – Toronto, Ontario, Canada – LES USA&Canada – Uneven Bargaining Power in Licensing Negotiations (aka How to Talk to Big Pharma or Big Tech) – Link.
  • 15 June – Washington, DC, USA – LES USA&Canada – IP Business Basics 101 – Link.
  • 15 June – Los Angeles, CA, USA – LAIPLA – Women in IP Presents: An Evening Oceanside Chat by the Strand ­– Link.
  • 15 June – San Jose, CA, USA – USPTO – Patent Cooperation Treaty Seminar – Link.
  • 19-22 June – Charleston, SC, USA – Association of Corporate Patent Counsel – 2016 ACPC Summer Meeting – Link.
  • 20 June – San Francisco, CA, USA – CLA – Copyright 101 for Songwriters and MusiciansLink.
  • 20-30 June – Various Cities, USA – INTA – Navigating the IR waters so you won’t drown – Link.
  • 22 June – Dolce Basking Ridge, NJ, USA – LES USA&Canada – Bringing Ideas and Discoveries from Conceptualization to the Marketplace Link.
  • 22 June – Santa Clara, CA, USA – LES USA&Canada – Hot Topics in Patent Licensing – Link.
  • 22 June – San Jose, CA, USA – USPTO – Trademark Madrid Protocol: Update and Tips for UsersLink.
  • 22-23 June – Miami, FL, USA – IACC & UL – Latin America Regional Brand Protection Summit Link.
  • 22-24 June – Atlanta, GA, USA – IQPC – Information Governance Exchange – Link.
  • 23 June – Houston, TX, USA – HIPLA – Monthly HIPLA Luncheon Meeting Link.
  • 23 June – Chicago, IL, USA – IPLAC – 26th Annual Trade Secrets Seminar – Link.
  • 27 June – Venice, CA, USA – CLA – Trademarks for Artists & Creative EntrepreneursLink.
  • 27-29 June – Los Angeles, CA, USA – IQPC – 7th Anti-Piracy and Content Summit . Link.
  • 28 June – Alexandria, VA, USA – USPTO – USPTO IP and 3D Printing Conference – Link.
  • 30 June – Chicago, IL, USA – IPLAC – Ethics in Intellectual Property – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 8 June – Sao Paulo – ASPI Brasil – Provas Periciais no novo CPC e a Propriedade Intelectual Link.
  • 9 June – Lima, Peru – IPR Helpdesk – Training en Lima: Aprende a proteger tus creaciones en Perú y en Europa – Link.
  • 13-15 June – Bogotá, Colombia – WIPO – Taller de la OMPI sobre servicios de apoyo a la innovación de valor añadido con base a la vigilancia tecnológica y a la inteligencia competitiva para el personal de los Centros de apoyo a la tecnología y la innovaciónLink.
  • 23 June – Sao Paulo – ASPI Brasil – Impactos da Impressão 3D na Propriedade Intelectual Link.

AFRICA, ASIA & OCEANIA

  • 15 June – Melbourne, VIC, Australia – ACLA – 3D printing and copyright: yet another threat for copyright owners Link.
  • 15 June – Colombo, Sri Lanka – WIPO – National Workshop on Increasing the Capacity and Pace for Technology Scouting, Absorption, Adaptation and Commercialization through a ‘Hub and Spoke’ StructureLink.
  • 23 June – Melbourne, VIC, Australia – ACLA – 15 June – Melbourne, VIC, Australia – ACC – VIC: 3D printing and copyright: yet another threat for copyright owners – Link.

 

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

US Supreme Court finds no copyright violation in Google Books Library project

by Sahana Pal

In a landmark decision that brought an end to the decade-long legal battle between Authors Guild and Google, the US Supreme Court dismissed[1] the former’s writ of certiorari on 18 April 2016, effectively agreeing to the Second Circuit Court of Appeals decision[2] that Google has not violated any copyright law in creating their electronically searchable mammoth book library of more than 20 million books.

The Google Books Library Project, a service that started in December 2004, makes and retains digital copies of books and magazines submitted to it by authors and publishers through the Google Books Partner Program, allows the libraries that submitted a book to download and retain a digital copy, and allows the public to search the texts of the digitally copied books and see displays of snippets of text.

Authors Guild, America’s oldest and largest professional organization for writers then brought a suit against Google in 2005, along with Association of American Publishers, alleging “massive copyright infringement”. Their main issue was that Google’s inclusion of book “snippets” was too substantial in nature, thus challenging the definition of “fair use” under section 107 of the US Copyright Code.

The suits were consolidated and a settlement reached, where Google decided to pay $125 million to copyright holders in return for the right to continue using the scanned results. But then a district court ruling rejected the settlement on grounds of Google’s unfair competition advantage. An amended suit was filed in 2011, which got dismissed in 2013, as the district court found the project abiding by the rules of fair use. Authors Guild appealed.

The Court of Appeals for the Second Circuit concluded that Google’s copying was transformative within the meaning of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-585 (1994), did not offer the public a meaningful substitute for matter protected by the plaintiffs’ copyrights, and satisfied § 107’s test for fair use. Specifically, the Court noted that:

[T]he purpose of Google’s copying of the original copyrighted books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it.

Snippet view adds important value to the basic transformative search function, which tells only whether and how often the searched term appears in the book. Merely knowing that a term of interest appears in a book does not necessarily tell the searcher whether she needs to obtain the book, because it does not reveal whether the term is discussed in a manner or context falling within the scope of the searcher’s interest. For example, a searcher seeking books that explore Einstein’s theories, who finds that a particular book includes 39 usages of “Einstein,” will nonetheless conclude she can skip that book if the snippets reveal that the book speaks of “Einstein” because that is the name of the author’s cat. In contrast, the snippet will tell the searcher that this is a book she needs to obtain if the snippet shows that the author is engaging with Einstein’s theories.

Google’s division of the page into tiny snippets is designed to show the searcher just enough context surrounding the searched term to help her evaluate whether the book falls within the scope of her interest (without revealing so much as to threaten the author’s copyright interests). Snippet view thus adds importantly to the highly transformative purpose of identifying books of interest to the searcher.

Authors Guild expressed disappointment on Supreme Court’s affirmation of the decision, saying the Court was “blinded by the public benefit arguments” resulting in a “colossal loss” for the authors, as effectively the ruling has held “Google, not authors, deserves to profit from the digitization of their books.”[3] Criticizing the Second Circuit’s lack of empathy towards the emerging online book market, Mary Rasenberger, executive director of the Authors Guild commented that “Authors are already among the most poorly paid workers in America; if tomorrow’s authors cannot make a living from their work, only the independently wealthy or the subsidized will be able to pursue a career in writing, and America’s intellectual and artistic soul will be impoverished.”

Google however, was all praises for the judgment, as it believed the decision was in the best interest of the authors as well as the public.

Nevertheless, what can be said for sure without taking sides, is that the decision has certainly stretched the boundaries of “fair use exception” under copyright laws, and opened up a whole new dimension of archival digitization. Especially for non-profits and libraries with limited financial resources, this decision comes as a ray of new hope, as Google Books finally become “legal” after a decade.

Sahana Pal

Assistant Editor, QMJIP

 

[1] Full decision available at http://www.supremecourt.gov/orders/courtorders/041816zor_2co3.pdf

[2] Full decision available at http://www.ca2.uscourts.gov/decisions/isysquery/b3f81bc4-3798-476e-81c0-23db25f3b301/1/doc/13-4829_opn.pdf

[3] See https://www.authorsguild.org/industry-advocacy/supreme-court-declines-review-fair-use-finding-decade-long-book-copying-case-google/

Cadbury’s appeal falls flat as Registrar of Trade Marks refuses to delete part of their purple trade mark

by Sahana Pal

Cadbury’s appeal for deleting an alleged purple series mark from UK Trade Mark Register was recently dismissed by the High Court on 18 April 2016.[1]

The original application was registered on 19 May 1995 (the 876 mark) for a swatch of Cadbury purple and the description of which was given as “The mark consists of the colour purple”. There was an initial objection based on lack of distinctiveness which was eventually overcome. Then the Registrar was concerned with the description of the mark and, following a formal request by Cadbury to clarify that description by a proposed form of words, on 9 September 1997 the Registry responded with a suggestion that the mark be amended to “The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”.

But following the 2014 Court of Appeal decision in Societe Des Produits Nestle SA v Cadbury UK Ltd , [where it was held that Cadbury’s attempt of registration of the colour purple (different from the 876 mark) as “applied to the whole visible surface” or being “the predominant colour applied to the whole visible surface” of packaging of chocolate goods lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration and did not satisfy the requirement of “a sign” that was “represented graphically” for the purposes of EU Directive 2008/95 Article 2] Cadbury apprehended an invalidity attack on its 876 mark as well, and proposed to strike off the section “or being the predominant colour applied to the whole visible surface” from their description – pursuant to the Trade Mark Rules 2008 r.28(5) – thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of its goods.

However, the hearing officer dismissed Cadbury’s application, stating that the Court of Appeal’s judgment could not be read to the effect that the verbal description of the mark was actually a description of two marks, and accordingly there was no mark to be deleted at all, making any further proceedings contrary to Trade Marks Act 1994, s 44. Cadbury appealed, contending that the officer had made a material error of principle in not recognising that the 876 mark was a series mark consisting of two marks that differed only as to matters of a non-distinctive character not substantially affecting the identity of the mark, and that, once his error was acknowledged, the appeal had to be allowed.

Mr Baldwin QC, sitting as a Deputy Judge of the High Court, took note of the arguments and held that Cadbury’s proposal was “fundamentally flawed” as

the 876 mark is not a series mark, the description is not of two marks or of a series of marks, there are no identifiable members of any series which might be the subject of a request for deletion, accordingly any request for such a deletion cannot be entertained and the appeal must be dismissed.

He further noted that the Court of Appeal’s reasoning clearly did not apply here, since there the Court had referred to the description of the mark as a whole and did not distinguish between them as two separate marks. In the current case, the mark in suit’s ‘alternative’ description encompassed a large but unknown number of signs with only one characteristic in common – purple being the predominant colour applied to the whole visible surface of the packaging. That single common characteristic was insufficient to satisfy the section 41 criteria for series trade marks, because in a hypothetical sign, although purple might be the predominant colour in terms of area, there could be yellow or green spots as well, which contributed to the sign’s overall distinctive character. The disputed 876 mark thus covered a number of marks which were not part of any series, and consequently, no deletion of the requested wordings was possible.

[1] Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch)

Sahana Pal

Assistant Editor, QMJIP

 

‘The New Trade Mark Defenses System’

by Maria Tsouvali

In 2008 EU Commission decided that it was time for a groundbreaking reform in the European Trade mark system. Eight years later, notable changes have been brought into effect by the new (EU) 2015/2436 Directive and (EU) 2015/2424 Regulation. In the light of this, from 23 March 2016, the name of OHIM became European Union Intellectual Property Office (EUIPO) and the name of CTM changed as to European Union trade mark (EUTM). In this article I will follow the changes relating to trade mark defences.

According to Article 12 of the Regulation[1] and Article 14 of the Directive[2], a Trade mark proprietor is not be entitle to prohibit third parties from using a Trade mark in course of trade where it is the name of a natural person.  As with all of the defences this is subject to the proviso that the use is ‘in accordance with honest practices regarding industrial or commercial matters’[3].

The ‘own name defence’ has been narrowed down to ‘natural persons’, excluding corporations, business entitles and partnerships when relying on that kind of defence[4]. In that case it is crucial for enterprises to consider appropriate searches before adapting tradenames .That would ensure that there are no relevant third-party rights that could potentially be infringed. It is therefore important to declare that this defence has been successful in the past regarding company names. In Stichting BDO and others v BDO Unibank, Inc and others[5] the English High Court held that the defendants’ use of the marks BDO and BDO REMIT did not infringe Stichting BDO’s Community trade mark. Although this case was a rare example of the ‘own name’ defence it succeeding in the UK courts something which was altered under then new legal regime. [6] The previous provision (Article 6 (1) (a) of the TM Directive) has been interpreted broadly by the ECJ as well. In AnheuserBusch v.Budejovicky Budvar the ECJ extended the use to trade names[7].Through those changes Commission seemed to be interested in imposing its original intention rather than letting courts broadening the interpretation of such defence which may cause damage to Trade Mark holders[8].

Due to the current reforms, another significant change has been made. The descriptiveness defence has been extended to cover the use of non-distinctive signs as well. More specifically, signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering service or other characteristics of goods or services can be applied by a defendant in order to avoid trade mark infringement. [9] This will enable Trade mark proprietors of using non-distinctive components of earlier registered marks as decorations or as indications of their own marks. Thus, we assume that the new defence will apply only to those components of registered marks which remain non distinctive and not to the non-distinctive elements which have acquired distinctiveness through use. In that respect its application would be slightly different from the descriptive use exception. [10]Moreover, applications are rejected only when they consist exclusively of non-distinctive elements, so it is possible to register marks that include of non-distinctive components as well. Consequently one may imply that the justification behind the new adaptations is Commissions intention to endow some freedom to Trade mark proprietors.

The reform package brought another fundamental change regarding the extension of the ‘intended purpose’ defence as to a more general referential use. The new amendment of the EU law applies where the use of a third party sign is ‘necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’.[11]The scope of law is extended to all circumstances where the TM is being used for the purpose of identifying or referring to goods or services as those of the proprietor of the EUTM, offering greater protection for suppliers of accessories or spare parts. [12] Without a doubt, that change offers remarkable freedom to European traders giving them the opportunity to refer to Trade mark owner’s goods or services by using another trader’s mark. This provides equivalent freedom as in the United States where a body of case law has emerged, in which traders are permitted to such acts. [13]Even though this change brought a ‘notional broadening of the exception we should underscore that in terms of reform it did not extend the defence too much[14].  Max Planck Institute had suggested the broadening of the exception as to parodic references as well which was not finally included to the new reform package[15].

Regarding the ‘own name defence’ narrowing the scope of the limitation does not seem appropriate. It creates unequal conditions for trade names in case of conflicts regarding company names. Regarding that issue, there have been disputes within the member states which were resolved by the ECJ to the contrary of what was finally adopted by the new law.[16] Using the rule of proportionality the EU Commission should have tried to balance the rights to property (Art. 1 of Protocol No 1 ECHR) and the rights to freedom of expression (Article 10 ECHR) in favor of the broadening of that exception. Enterprises would be limited in using certain company names which may be well established in course of trade. While every rule is tested by fair use[17] this would not cause any unfair judgements against Trade mark proprietors if the Article kept its broad definition.

On the other hand, regardless the proposals of the Max Planck Institute[18], the EU Commission denied the adaptation of a parody exception in contrast with Copyright Law, where parody exists as a defence (Article 5(3)(k) of the InfoSoc Directive)[19]. In a case where a trader offers goods that have expressive qualities this could lead to trade mark infringement and consequently to restriction of freedom of speech.[20] An example drawn by US case law would be helpful here. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog the plaintiff was selling dog toys under the name ‘Chewy Vuitton’[21] using the name of the famous warehouse. This would have been a case defence under the parody exception if it was finally adopted. In general an exception for communication purposes to protect trade marks in artistic works was denied as well, making us wonder that in vast harmonization processes fundamental rights –like freedom of speech- sometimes are being compressed .

Maria Tsouvali

Assistant Editor  QMJIP

[1] Regulation (EU) 2015/2424.

[2] Directive(EU) 2015/2436.

[3]   L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1062.

[4] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[5] Stichting BDO et al. v. BDO Unibank, Inc et al., [2013] EWHC 418 (Ch).

[6] http://www.inta.org/INTABulletin/Pages/UNITEDKINGDOMOwnNameDefenseSuccessful.aspx

[7] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[8] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1064.

[9] Art.14(1)(b) of (EU) Directive 2015/2436 and Art 12(1)(b) of (EU) Regulation 2015/2424.

[10] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1069.

[11] Art 14(1)(c) of (EU) Directive 2015/2436 and Art 12(1)(c) of (EU) Regulation 2015/2424.

[12] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[13] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[14] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[15] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010), [2.258]-[2.262].

[16] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[17] Art 14(2) of (EU) Directive 2015/2436 and Art 12(2) of (EU) Regulation 2015/2424.

[18] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010),[2.262].

[19] http://europeanlawblog.eu/?p=2539

[20]L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1093.

[21] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, (4th Cir. 2007).

#canitrademarkmyhashtag?

by cristinaberra

Hashtags, which first appeared on Twitter with the function of linking users’ posts, have become so popular that they are now widespread on every social media, providing brands with new ways to engage with consumers. Hashtags appear in fact to be a powerful marketing tool, that allows business to drive online conversations about their brands, study consumers’ reactions and ultimately strengthen the connection they have with the public, thus enhancing their brands’ fan base. In such a context, it is not uncommon to see competitors trying to divert the content stream tied to a hashtag with their own products and marketing messages. That is why companies are more and more seeking protection for the hashtags they use, especially through trade mark law. But can a hashtag be registered as a trade mark?

The US Patent and Trademark Office defines hashtags as forms of metadata comprised of a word or phrase prefixed with the symbol ‘#’ and consider them registrable, but only if they function as identifiers of the source of the applicant’s goods or services. It seems then that the registration of hashtags follows the same rules that are applied to any other trade mark’s registration: essentially, the sign has to be capable of distinguishing the goods or services of one undertaking from those of another. This requirement however appears not so easy to meet, as hashtags often tend to be descriptive terms or slogans, which lack inherent distinctiveness. In such situations, the only way to secure registration is to prove secondary meaning, which seems anyway challenging, because slogans are often treated merely as a form of advertisement rather than source identifiers.

Moreover, it is questioned if the registration of hashtags may raise freedom of speech issues, especially given the innate nature of their use: such tools are in fact intended to be disseminated online, by social media users, to group entries into topics and to create links among posts having the same content, and not to be subject to some forms of private property. One of the biggest opponents of the registrability of hashtags is their creator Chris Messina, who believes the effort to trade mark hashtags to be misguided. In his view, “trademarks don’t belong on hashtags. Hashtags are a kind of conversational commons, and should be owned by no one but the crowd.” Companies however assure that they have no intention to prevent customers and fans from using the hashtags as a trade mark, as their only target is to stop competitors from using them for their sole commercial gain, trying to divert the online traffic and use it as an advertising channel.

Turning to trade mark infringement, according to the relevant provisions, if the use of a hashtag creates a likelihood of confusion on the public or makes it appear that there is a connection or link with the trade mark owner, an infringement might then be found. The grounds of an infringement action have of course to be assessed on a case-by-case basis and while considering the facts, the question that the Courts should try to answer is whether the use of the hashtag really has the power to create a likelihood of confusion or association, or simply promotes an intended social media message. In fact, the possibility of posts “going viral” can happen very quickly and in such circumstances a delicate balance should be drawn between the occurrence of infringement and the will of capturing the public’s attention at a given moment.

Ultimately, it will be on the Courts to have the final say on establishing the “legal status” of hashtags and their enforceability as trade marks. Until then, as brands surely will not stop to seek trade mark protection, they should at least #registerwithcaution.

Cristina Berra

Assistant Editor, QMJIP

From “Signing Off” to Passing Off. UB40 and the dispute over the use of the band’s name

by cristinaberra

“Signing Off” was the debut album of UB40, a British reggae/pop band which was formed in Birmingham in 1979 and over time has sold more than 70 million records, achieving great success both nationally and internationally.

The band was originally formed by nine members and this line-up stayed unchanged for nearly thirty years until 2008, when the frontman Ali Campbell left the group and was followed shortly by the keyboard player Mickey Virtue. In 2013 Astro left the band as well and the three formed a new version of the group, calling themselves “UB40 featuring Ali Campbell, Astro and Mickey Virtue”.

These facts have led to the recent lawsuit , where the remaining six members have claimed passing off on the goodwill of the group and the use of the band’s name. In that dispute the High Court recently considered the defendant’s application for summary judgment in  Campbell v Campbell (unreported, 21 March 2016).

Here are the facts of the case.

Goodwill is a form of intangible property that has be defined as “the benefit and advantage of the good name, reputation and connection of a business”.[1] Typically, passing off actions concern the goodwill that arises in relation to the name, symbol or logo that has been employed by a trader and consequently has been associated with its business.

The members of the band as in the original complete line-up were all employed by a company, which was the sole owner of the goodwill in the band and in the band’s name. In fact, according to the contracts of employment, the band’s members had no right to use the “UB40” name, and would not have any after departing from the group. The company went into administration in 2006 and into voluntary liquidation in 2008, and the group’s members then set up a second company, which however did not acquire the business from the first one. Successively, Ali Campbell, Astro and Virtue left, founded their new band and started to perform under the name “UB40”, which was thus used by both the two groups. The claimants (the remaining members of the original line-up) then sued the members of the newly founded group, arguing passing off on the use of the band’s name. The defendants in turn applied for summary judgment to strike out the case on the basis of an alleged assignment – from the first company’s liquidators – of the first company’s business and goodwill.

On the basis of the facts, the Court essentially held that any assignment of goodwill by the liquidators was ineffective because the company – after going into administration – ceased to carry on any business and, by so doing, abandoned any goodwill, so that it could no longer be assigned. Citing Ad Lib Club v Granville Case[2], the Court specified that, if the company had merely suspended the business activities, with a clear intent to resume them at some point, the assignment might have had some efficacy. However, the facts did not prima facie show this intent, which might nevertheless be assessed in the course of the trial.

This judgment has thus opened the way for a full High Court trial and it still has to be seen if the Court will eventually find passing off in the present case. What appears certain so far is that Ali Campbell and his fellows will “vigorously defend” the claim made against them.

Cristina Berra

Assistant Editor, QMJIP


[1] IRC v Muller’s Margarine [1901] AC 217

[2] Ad Lib Club Ltd v Granville [1971] 2 All E.R. 300