Archive for June 2009

Significant trade mark / comparative advertising law victory for big brand owners

Tuesday June 30th 2009, by Piers Strickland

The European Court of Justice (ECJ) has recently handed down its decision in the long-running case of L’Oréal SA v Bellure NV.

The case emanated from the use of L’Oréal trade marks in a list of products that were not genuine L’Oréal, but which nonetheless used the L’Oréal trade marks for comparative purposes.

The key question before the ECJ was to decide when use of the L’Oréal trade marks in comparative advertising would be taking “unfair advantage” and therefore amount to an act of trade mark infringement under the European Directive on Trade Marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks).

The ECJ held that a trade mark owner does not need to prove confusion and/or detriment in order to bring a claim for trade mark infringement for unfair advantage. Instead the ECJ held that unfair advantage could be obtained where:

“a party seeks…to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image”.

This case represents a significant victory for big well-known brand owners, not just those with famous trade marks in the perfume / luxury goods sector. This decision means that big brand owners, who have trade marks with a significant “reputation”, will be in a much better position to take action against those third parties who use their trade mark in comparative advertising.

Can Andy Murray register his name as a trade mark?

Thursday June 25th 2009, by Piers Strickland

The answer is almost certainly, yes, in respect of certain goods and services in the UK.

The fact that Andy Murray hasn’t done so in the UK is probably due to the fact that his mind is more on winning Wimbledon, rather than designing a range of lovely underwear (Bjorn Borg™) or some lovely furniture (Agassi – Graf™). Fair enough really.

However, registering your name as a trade mark is an effective method of controlling third party use of your name and for merchandising purposes. Once Andy Murray hangs up his tennis racket(s), his thoughts may turn to designer underwear instead…

Major changes by UK Customs will impact upon intellectual property rights holders

Thursday June 25th 2009, by Piers Strickland

It has been reported by the IPKat that HM Revenue & Customs (“UK Customs”) has significantly departed from previous practice. UK Customs was previously prepared to detain allegedly infringing goods upon receipt of a witness statement from the intellectual property rights holder alleging infringement. Now, UK Customs is requiring intellectual property infringement proceedings to be issued.

UK Customs’ made the following statement:

“Our [previous] practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.

We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgment and we are directed by the court to seize the items in question.“

UK Customs has defended these changes on the basis that they are needed to comply with Article 13 of Article 13 of Council Regulation 1383/2003, which has been implemented into the UK via SI 2004 No. 1473.

This is a blow for intellectual property rights holders, as UK Customs had been a very effective (and cheap!) way of acting against infringements coming into the UK.

However, no doubt some rights holders may have been over-using UK Customs in this respect. This may be another reason why UK Customs felt that the balance needed redressing by putting the burden of proof on the intellectual property rights holders.

The new regime may well impose a significant costs burden onto intellectual property rights holders. Issuing court proceedings for each infringement will certainly be an expensive business. Also, while some intellectual property infringements will be quite straightforward, others, such as those involving parallel / grey imports, may be legally much more uncertain. Therefore, intellectual property rights holders may even be forced to issue proceedings on weak / uncertain grounds, which is a recipe for even more expensive potential litigation.

In a time of recession and continuing problems with counterfeit goods, this news has probably gone down with intellectual property rights holders about as well as a cup of cold sick. Nice.

Mind you, HM Customs may end up saving some money, which might go some way to repaying the Government’s £Gazillions of debt. Some good news for Gordon, at last.

The danger of inadvertently disclosing your invention and thus potentially losing your patent rights

Thursday June 11th 2009, by Piers Strickland

In a recent case in the High Court of England and Wales of Folding Attic Stairs Limited v The Loft Stairs Company Limited, the Judge Peter Prescott QC (sitting as a Deputy Judge) ruled that a patent for a folding ladder was valid and infringed.

One of the most interesting aspects of the case was to decide whether the claimants had inadvertently invalidated their own patent by disclosing details of it before filing for a patent.

Pursuant to s.1(1)a of the UK’s Patent Act 1977, a patent may only granted to an invention which is “new”, i.e. it must have novelty, in line with s.2 of the Patent Act 1977. Many people do not realise that the law in this area is very strict and even a very small disclosure may be enough to destroy the novelty of a patent.

Here the patentees had invited the Irish Minister for Trade and Tourism and a photographer of the Irish Times to their factory in order to publicise their new ladder product. The Minister was apparently shown a test unit of the product and the photographer took a few photographs. In this case, the Judge held that the disclosure to the Minister and/or the photographs did not sufficiently divulge the important features of the patented invention to count as an anticipating disclosure which would have invalidated the patent.

Although the claimants / patentees were successful in overcoming this invalidity challenge to the novelty of their patent, the decision, on this specific issue, appears to have been a relatively close run thing. Another Judge could have quite easily ruled the other way on the same facts.

Accordingly, one of the key lessons from this case is: be very careful before disclosing details of your invention to third parties, before you have got a patent application filed. If you desperately need to disclose your invention to third parties (such as those providing funding etc), then make sure that all concerned parties have signed up to sufficiently well drafted confidentiality / non-disclosure agreement.

Being responsible for invalidating your own (valuable) patent is one business mistake no-one wants to make.

US antitrust department probes deeper into Google Books copyright deal

Thursday June 11th 2009, by Piers Strickland

Further to my earlier post, it has been reported that the US antitrust authorities are looking closely at the Google Books project (link) and the settlement with the US Authors’ Guild and others (link).

Part of the concern seems to be that Google is trying to exert exclusive rights over certain works, specifically orphan works. Any kind of exclusivity, particularly when one party is one of the largest IT companies in the world, and the leader in this specific field, raises significant potential competitions concerns.

As a result, it seems that Google’s attempts to clear the copyrights in question is just the first part of a larger legal battle. The various competition authorities may prove an even tougher hurdle to overcome than the US authors.

The Google Books project is also an interesting example of the complex interplay between intellectual property rights (here copyright) and competition law. Certain intellectual property rights offer monopolies, whereas competition laws seek to prevent (unlawful) monopolies. The tension between these two positions add another dimension to this Google Books saga.

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