For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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

Friday, 1 August 2014

Red faces over PINK knickers? Victoria's Secret has a tough time in court

Cometh the hour, cometh the (pink) Kat ...
News has now began the haemorrhage through the blogosphere that British-based shirt-maker Thomas Pink has emerged happy and glorious from a spot of litigation against US intimate apparel company Victoria's Secret. This Kat has received, several times over, the judgment of Mr Justice Birss, in Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch), in the Chancery Division of the High Court, England and Wales (doubling as the Community Trade Mark Court), but he has been too busy looking at the pictures doing his tax returns to read the judgment, which is rather long (217 pages plus annexes). Meanwhile, he is happy to plunder and adapt the text prepared by his friend and colleague Sarah Wright together with Kaisa Mattila at Olswang LLP, which was posted on the firm's Fashionista-at-Law weblog today. In short, as Sarah and Kaisa explain:
In a judgment delivered by Mr Justice Birss yesterday [which you can access here or download here], Victoria’s Secret was found to have infringed Thomas Pink’s trade marks for “PINK”. As reported in Business Week shortly after the judgment was handed down, Mr Justice Birss ruled that consumers in Europe might come to associate the traditional luxury shirt-maker with mass-market goods and underwear, which would cause detriment to the repute of its brand. “For example consumers are likely to enter one of the claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake”, Birss J said.

Thomas Pink brought this action in response to the opening by Victoria’s Secret of two London stores, one of which stocks its “college girl” range of clothing, lingerie and accessories branded PINK, a range which was already widely available in the USA. The court considered four different types of use of the PINK brand by Victoria’s Secret, illustrated above, and found that use of the mark on garments and on store fronts (uses 3 and 4) infringed Thomas Pink’s trade marks. Other uses which combined “PINK” with the well-known “Victoria’s Secret” mark (eg in-store signage and social media pages, represented by use 2) did not infringe, as those types of use were unlikely to result in confusion. As regards use 1, Victoria's Secret maintained that it had used its mark in a non-confusing manner and also that Thomas Pink had acquiesced in this use. However, Thomas Pink's denial of this was accepted by the court.

In its defence, Victoria’s Secret sought to invalidate Thomas Pink’s registrations on the basis that the mark PINK was descriptive and had not acquired distinctiveness. Since Thomas Pink’s UK and Community trade mark (CTM) registrations were both device marks, the company argued that those marks were not exclusively descriptive. Notwithstanding this, Mr Justice Birss agreed that, given the nature of the mark PINK, it needed to have acquired distinctiveness to remain on the register. Crucially, however, he held that the mark had in fact acquired a distinctive character and was therefore validly registered. Victoria’s Secret’s counsel further argued that elements of Thomas Pink’s registrations should be revoked for non-use. While the Court agreed that there were some goods within Thomas Pink’s specification where there had been no genuine use, the vast majority of the goods were not revoked since there had been use (albeit by reference to a mark in a slightly different form to that registered). Judge Birss commented that, “Proprietors do not always and consistently use a mark in precisely the form as registered. This is recognised in s. 46(2) [of the UK's Trade Mark Act 1994] which permits minor variations to be taken into account in order to avoid revocation of the mark”.

Victoria’s Secret had sought to rely on the fact that the two brands have been coexisting on the US market for many years without confusion. However, Mr Justice Birss held that the position was different on the European market, where it was likely that the average consumer would be confused by the mark PINK being emblazoned on the defendant’s clothing. The presence of the well-known mark VICTORIA’S SECRET on some of those goods did not avoid infringement, due to the prominence of the word PINK which was strongly associated with the claimant.

One interesting part of the judgment relates to the evidence of confusion adduced by Thomas Pink employees. Thirteen members of staff gave evidence recounting incidents where members of the public appeared to be confused, but none of the consumers themselves gave evidence. The judge commented that 
“the claimant’s evidence of actual confusion is not of sufficient weight to lend any significant positive support to the claimant’s case but it does play an important negative role in this action. Its existence is sufficient to prevent the defendant from credibly contending that there is no evidence of actual confusion in the UK or the EU”. 
Historically, UK Courts have been very strict about how consumer evidence can be adduced in trade mark cases. The acceptance by the Court of this kind of evidence, albeit the limited probative value of it, will be welcomed by brand owners who often find it hard to convince members of the public to get involved in Court proceedings.

Birss J’s judgment confirms that confusion between trade marks (including by way of association) can be found to arise even where the fashion brands target very different segments of the market. 
The Fashionista blog predicts that this is unlikely to be the end of the story, with a further appeal here and/or further proceedings in the United States unless the parties can use yesterday’s judgment to form the basis of a coexistence agreement. This Kat is, as is well known, very enthusiastic about coexistence agreements, and he suspects that this is one set of facts that might favour such an outcome since the parameters of a non-confusing use of the P-word by Victoria's Secret can easily be envisaged, and Merpel adds that any such agreement might want to say a bit about bidding for "pink" as an internet keyword too.

A further blogpost on this ruling is likely, since it covers so many different issues. At nearly 22,000 words in length, that's certainly to be expected.

Friday fantasies

Forthcoming IP events. Even though it's the summer (in the Northern hemisphere, at any rate) and there's not much going on in terms of conferences and other events, new forthcoming attractions for the rest of the year and indeed beyond continue to be added to the IPKat's Forthcoming Events list. Do check it out when you have the chance!

Grump, Dopey, Sleepy ... surely we aren't
talking about IP Ministers?
Around the weblogs. Mark Anderson's post on IP Draughts, "Snow White and the Seven Dwarfs: What is the point of IP ministers?" needs little explanation and is well worth a read. Over on IP Finance, this blogger's live post, "IP evolution: a chance to talk", has attracted a bit of dialogue on the subject of turning IP into a real asset class by providing better information about it, while Neil asks how one can value the contribution made by a design to a successful product. Via Australian barrister and IP scholar Warwick Rothnie comes a pointer to, which in turn links to what it says is the Commonwealth Government’s Online Copyright Infringement Discussion Paper July 2014. When he received this information, the Discussion Paper didn't seem to be on the Attorney General Department's website -- but it is now [if you're about to go on holiday, don't! Submissions close on 1 September]. Finally, SOLO IP takes a look at the ambitions of IPReg, the UK's regulatory authority for patent and trade mark attorneys.

Medicinal product assessment has
become increasingly sophisticated
since the days of Lewis Carroll
Medicinal product assessment: a new defence to UK patent infringement. The Legislative Reform (Patents) Order 2014 (SI 2014/1997) has now been published and affects the scope of patent infringement in the United Kingdom. This Kat would doubtless have kept tucking it away into the furthest recesses of his "things to do if only I had the time", had it not been for a prompt prompt [the first 'prompt' being an adjective, the second a noun] from Graham Burnett-Hall (Marks & Clerk), who earns a katpat for his pains.  This Order tweaks section 60 of the UK's Patents Act 1977 a bit, by adding add a new subsection 6(D). This provides that anything done in, or for the purposes of, a medicinal product assessment, which would otherwise constitute an infringement of a patent for an invention, should be regarded as having been done for experimental purposes relating to the subject matter of the invention [and therefore as not infringing the patent]. The words "medicinal product assessment" get a crisp new definition under s.60(6)(E) as being any testing, course of testing or other activity undertaken with a view to providing data for any of the specified purposes, which include obtaining marketing authorisations or complying with regulatory rules. If you are planning to retire or to change your career on or before 30 September, you don't need to know about this Order since it only comes into force on 1 October 2014. There are a few other tweaklets to the Patents Act, so do take a good look at the Order.

"Eugh!" But surely we're not
being rude about the CJEU ...
The Unitary Patent and Unified Patent Court are words that are never far from the heart and mind of Rechtsanwalt and IP enthiusiast Ingve Björn Stjerna. Ingve informs us of his latest article, this time on the hearing of the Spanish actions before the Court of Justice of the European Union to challenge the validity and legal basis on those two planks of the new European patent regime. You can read "“Unitary patent“ and court system – The oral hearing on Spain’s actions at the CJEU" here in English and, under its German title „Einheitspatent“ und Gerichtsbarkeit – Die mündliche Verhandlung der Klagen Spaniens beim EuGH" here. Ingve attended the hearing in Luxembourg, his impression being that it was not too conclusive in relation to the Court’s position. If you've not already taken a look, Ingve's archive of interesting bits and pieces concerning patents in the new Europe can be accessed here [Merpel draws the attention of readers to the dictionary entry for EUGH here].

Pending referrals before the Enlarged Board

A couple of referrals to the EPO Enlarged Board of Appeals have slipped past the nose of the IPKat in recent months. Avid readers of the EPO Official Journal will have spotted them already, but the IPKat thought that they are worth highlighting, particularly as the time limit for comments to the Enlarged Board is still running for the three cases highlighted below.

G 3/14: Examination of clarity objections (comments invited by end of August 2014) 
The referred questions are as follows:

    Wim Van der Eijk,
    Board of Appeal
  1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?
  1. If the Enlarged Board answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features, or may it extend to features already contained 
  2. in the unamended independent claim?
  1. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
  1. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?
While this may look to be pretty dry stuff, it could have a deep impact on EPO opposition practice. Lack of clarity is not a ground for opposition at the EPO, but it can be brought up in two ways. Firstly, some kinds of clarity attacks can be shoehorned into the proceedings under the guise of insufficiency. Secondly (and relevant to this referral) the clarity of the claims can properly come under scrutiny when the proprietor has to amend.

There has been diverging case law on exactly what kinds of amendment will trigger a clarity examination. The traditional view (see e.g. T 301/87) was that there is no power to examine under Art. 84 EPC where the amendments creating the lack of clarity consist of a combination of claims as granted, the reasoning being that such amendments do not create any new lack of clarity, i.e. the amended claims are no less unclear than the granted claims which were immune from clarity attacks in opposition. However in T 1459/05 the board explicitly departed from this case law and found that the newly added feature was critical to assessing patentability, yet was “so unclear” that a proper analysis of novelty could not be carried out, justifying the raising of a clarity objection. (While the Board in T1459/05 described the circumstances as “exceptional”, it is perhaps not surprising how many opponents believe that they too are witnessing exceptional amendments justifying a full clarity examination.)

The Enlarged Board is being asked to lay down some concrete rules as to when clarity can and cannot be raised, especially as regards combining complete or partial claims as granted. Provided that it does not succumb to the temptation to answer with a finely judged lack of clarity of its own, the decision should help both patentees and opponents understand the limits of Article 84 in opposition.

G 1/14 and G 2/14: Inadmissible appeal or deemed not filed? (comments invited by end of September 2014)

The first of this pair of referrals is in the German language, the second is from an English language case. While the questions referred are not identical, the IPKat expects the decisions will issue simultaneously given the heavy overlap.

G 1/14 asks: If, after expiry of the time limit under Article 108 EPC, first sentence, a a notice of appeal is filed and the fee for appeal is paid, is the appeal inadmissible or is it deemed not to have been filed?

G 2/14 contemplates a slightly different situation, where only the fee was late paid:
Where a notice of appeal is filed but the appeal fee is paid after expiry of the time limit of Article 108 EPC, first sentence, is this appeal inadmissible or deemed not to have been filed?

The referrals are necessary due to conflicting case law. The leading early decision, J 21/80, was mistranslated from French into English. The original French text said the appeal in that case “est considéré comme non formé”, while this was rendered incorrectly in English as "The appeal against the Decision ... is inadmissible". Two lines of case law have grown up, with the "deemed not filed" school of thought being the more orthodox view.

Why does it matter? Well, at a narrow level, there is a question over whether or not the EPO should have to refund the appeal fee. The EPO must refund if the appeal was deemed never filed, but cannot do so if the appeal has come into being but is inadmissible. This also has a potential knock-on effect in the G 2/14 application, where two renewal fees paid since the commencement of the appeal might also have to be refunded if the appeal is deemed never to have been filed.

More broadly still, the referring Board in G 2/14 notes that:

The same wording as in Article 108 EPC can be found in Article 94 EPC (request for examination), Article 99 EPC (opposition) and Article 105a EPC (limitation), Article 112a (petition for review), and in Rule 22 EPC (registration of transfers), Rule 89 EPC (intervention), Rule 123 EPC (conservation of evidence), and Rule 136 EPC (re-establishment). Consequently, the interpretation of Article 108 EPC, second sentence, could have implications that go beyond the current case to be decided.

Finally, the referring Board in G 2/14 notes that although the preponderance of case law would favour the “deemed not filed” interpretation, it tends to prefer the minority of decisions following the “inadmissible” line.

Older referrals

For the record, the other referrals currently pending before the Enlarged Board, not including pending petitions for review (list here), are:

Thursday, 31 July 2014

7,000 EPO employees in DE, NL, AT & BE ... plus one in FR?

EPO President Battistelli in his office. The Eiffel Tower is
not visible from this angle, it would appear.
Back in 2010, when Benoît Battistelli was first appointed as President of the European Patent Office (EPO), there was a certain lack of transparency in the election process. As a blog post by IAM Magazine reported at the time, mischievous rumours quickly emerged from the EPO staff union newsletter (PDF link) to fill the vacuum of information regarding the circumstances of Mr Battistelli’s appointment.

Battistelli’s original contract was negotiated in secret with Mr Jesper Kongstad, the then Acting (and now actual) Chairman of the Administrative Council. It was rumoured, intriguingly, that the contract specified that Mr B’s place of employment was the Parisian suburb of Saint Germain-en-Laye (the town of which he was deputy major, the spiritual home of football team Paris Saint-Germain and the birthplace of Louis XIV, the Sun-King), and that it contained an annex granting him full pension rights at the end of his five-year contract. While Merpel, whose nine lives invariably make any sort of pension annuity unaffordable since the pension must last so much longer than expected, can see the attraction of having full pension rights after a relatively short employment stint, she wonders what advantage or reason could lie behind deeming Mr Battistelli's place of employment to be 700 km west of where his office is actually located, if there is any substance behind that improbable rumour. The union newsletter, SUEPO Informs, also reported that Mr Kongstad refused to show the final contract negotiated with Mr Battistelli to the Administrative Council ('AC'), despite repeated requests by its apparently quite powerless members.

Another of St. Germain-en-Laye's favourite suns (sorry),
who holds the European record for extended reigns with 72
years, 110 days. Also known for ambitious building projects ...
As we now know, Mr. Battistelli has been reappointed for a further three-year term starting in July 2015, to much unhappiness on the part of some EPO staff. What surprised Merpel, however, was being informed by an impeccable source that the AC has once again entrusted Mr Kongstad with negotiating the extended contract with Mr Battistelli, and without requiring that the terms be presented to or ratified by the AC. This casts significant doubt on the SUEPO suggestion that, back in 2009, significant numbers of AC delegates were unhappy not to have been given sight of the original contract (or it suggests that those delegates have very short memories if they are prepared for the same to happen again).

In particular, Merpel understands that
  • the decision to extend Mr Battistelli’s contract was carried by an overwhelming majority of the delegations, in a secret ballot.

  • having made the decision to extend the contract, the Council then authorised Mr Kongstad to negotiate and conclude the terms of the extension “under his sole authority”

  • this latitude is however constrained by an understanding that the extension be on the same basis as the original 2009 contract.
It is unfortunate (meaning that Merpel takes great delight in observing) that, at the highest levels of the European Patent Organisation, such murkiness abounds. The original power struggle; the former rivals who are now apparently interdependent as President and AC Chairman; the negotiation of a secret extension to a secret contract appointing the head of a large, powerful, pan-European organisation to which countries have devolved extensive powers: it’s all grist to Merpel’s mill.

Jesper Kongstad, Chairman,
EPO Administrative Council, about whom
Merpel has no funny gags ... yet
Less savoury is the apparent indifference of the AC members to the staff concerns. The AC membership is the various member states, represented almost invariably by the head of each national patent office. Never friends to the EPO staff unions, it appears that the AC has been deaf in recent months to the entreaties of EPO staff representatives asking them on several occasions to put a check on Mr Battistelli’s more excessive actions. Indeed at the most recent meeting, Merpel hears that the AC discussed the current unrest with the President and expressed its unwavering support to him, urging him to push ahead with his reforms.

Is this an example of patent office heads naturally siding with one of their own, and against the troublesome unions? Or is it more nuanced, with AC members having due regard to staff concerns but seeing a different balance in the debate? And just why is the AC so eager to keep Mr Battistelli in place for three more years at (apparently) any cost? 

Most intriguing, does anyone other than Mr B and Mr K know what was in that original contract? Merpel is interested both in the literal answer to this question (i.e. has the contract been seen by, or have its terms been revealed to, anyone other than the two main actors?), as well as in the implied further request that someone might spill the beans and tell us whether Mr B was indeed deemed to be employed in France rather than in Germany, and what tiny fraction of each renewal fee goes into Mr Battistelli's monthly pay-cheque.

While Merpel is always eager to hear from EPO staff members, on this occasion she is hoping to also hear from anyone in the national patent offices who either attends the AC meetings or knows the underlying politics behind the initial appointment and later reappointment of Mr B. Her address for such correspondence, for which she will as ever be unfailingly grateful and unyieldingly discreet, is

The more secretive the EPO is in its dealings, the more curious we all become about what is really going on there. The 21st century is an era of public sector transparency, a fact that the EPO appears not yet to have grasped. Perhaps, if any reader is passing through St Germain-en-Laye, they might drop a note to that effect through the letterbox of the EPO employee who may or may not be based there.

Wednesday, 30 July 2014

From 1 October UK will have exceptions for private copying, broader quotation and parody

Following some fear [here and herethat UK Government could have decided not to introduce exceptions for private copying, broader quotation and parody into UK copyright after all, last month this blog reported that the "missing" exceptions were back with new [well, not so new as they were basically unchanged] draft Statutory Instruments (SIs) [here and here].

Following approval in the House of Commons earlier this month, yesterday at around 6:15 pm [as the illustrious and learned Katfriend who told this Kat specified] the House of Lords also approved the draft SIs [you can read an early statement from the Open Rights Group here].

This means that, following the bunch of other exceptions [research, education, libraries and archives; disability; and public administration] that entered into force on 1 June last, also these new exceptions are now scheduled for entry into force. This will be on 1 October 2014.

The official report from yesterday's discussion in the House of Lords makes an engaging reading. New IP Minister Baroness Neville-Rolfe said pretty interesting things not only about these exceptions, but more in general about the role of copyright and how UK Government intends it. 

Strong and (clearly) respected
She started by saying that "[c]opyright legislation needs to be strong and respected to keep up with the pace of innovation and the digital revolution." To this end, "[t]he Government are committed to raising awareness and understanding of IP across all businesses large and small in order to protect innovation and originality and meet changing consumer needs."

Among the initiatives promoted by UK Government, she mentioned extending copyright protection for sound recordings and performances [by the way: did you know that apparently France, Poland and Romania have yet to transpose Directive 2011/77/EU into their national laws?], setting up the Police Intellectual Property Crime Unit [see the "This website has been reported to the police" initiative described by Jeremy here], supporting the industry-led Copyright Hub and educational campaign Creative Content UK [also mentioned in the Australian Government Discussion Paper on Online Copyright Infringement, which has just been released].

Personal copies for private use do not come with a levy

With regard to this exception, the IP Minister started by saying that "[c]opyright law should not stand in the way of people being able to use and enjoy their own property.

However, compared to private copying in other EU Member States, the forthcoming UK exception for "personal copies for private use" will be narrower. 

In particular "it will not allow someone to give or sell a copy they have made to someone else, or share copies from their personal cloud; it will not allow someone to obtain a copy from sources they do not own, such as rented copies, broadcasts or on-demand services; it will not prevent copyright owners from using technology to guard against copyright piracy, such as the copy protection for films found on DVDs and Blu-ray discs; and it will not prevent copyright owners from licensing additional services, such as cloud services which allow shared access to content."

Because of its narrow scope, UK Government decided against the introduction of private copying levies [which, for instance, have been recently at the centre of heated discussions in Italy], also on consideration that British consumers would not tolerate them. 

"They are inefficient, bureaucratic and unfair, and disadvantage people who pay for content", said the Minister, who added that the InfoSoc Directive leaves Member States free not to provide compensation where an exception is likely to cause minimal or no harm, or where appropriate payment has already been made. This view is also supported by UK-based IP profs. In any case, as readers might probably remember, the de minimis rule as per Recital 35 to the Directive is among the issues at stake in the pending Copydan reference [Merpel, who likes drama, says: it would be fun if the Court of Justice had a different opinion from UK Government and IP profs ...].

Parody caricature and pastiche will have to be fair dealing

As regards the parody/caricature/pastiche exception, the Minister observed that "we need to protect the right to mock the high and mighty". Above all, "[c]opyright should incentivise creation, not obstruct it. It should allow people to voice their opinions, not stifle them."

Fair (dealing) enough, but you better not think that this does give you carte blanche to do whatever crosses your mind. 

This is because UK Government deemed appropriate to frame the parody/caricature/pastiche exception within fair dealing. So, "fair dealing will mean that copying a whole work without changing it will not be allowed. For example, it would not be considered “fair” to use an entire musical track on a spoof video. This will mean the market for the original work should be unaffected."

This Kat has already criticised the move of framing parody within fair dealing, on fear that in practice UK exception might end up being a pretty narrow defence, especially when it comes to artistic works. 

As regards music tracks, Merpel wonders how this could affect the market for this ... Yet, "At present, when a whole work, such as a musical track, is used in a parody the copyright owner will often allow this in exchange for appropriate remuneration. The fair dealing exception means that such licensing will still be possible." 

This new exception leaves unaffected "tough laws on libel".

Random quotes will be OK
Quotation beyond criticism or review

Finally, with regard to quotation, broadening its scope was deemed necessary because "UK copyright legislation currently allows quotations and extracts only for the purpose of “criticism or review”. So a whole range of activities which the average person is likely to consider reasonable risk infringing copyright because they fall outside the current “criticism and review” exception. An academic paper or student essay which quotes a title of a journal, book or film, or uses a short extract to ensure proper citation, although likely to be considered fair by a court, is likely to fall outside the current “criticism and review” exemption. Small theatres and record companies have complained that they are often prevented from using quotes from newspaper reviews in their own promotional material."

The changes "will remove this limitation and permit all types of fair quotation, as long as there is acknowledgement of the source of the quotation. There should be no obstacle to fair and honest quotation. British citizens should have no less a right to it than those of other democratic nations."

A scoop ... of yoghurt!

Miffy just can't get enough
Greek yoghurt ...
"Greek dairy company Fage wins yogurt case in Britain" is the headline of a piece of breaking news carried in Ekathimerini today. The yoghurt case in question is Fage UK Ltd & Another v Chobani UK Ltd & Another [the decision of Briggs J at trial is at [2013] EWHC 630 (Ch), noted by the IPKat here; the appeal decision, at [2014] EWCA Civ 5, featuring Lords Justices Lewison, Kitchin and Longmore, is noted by the IPKat here]. This Kat has been fascinated by this dispute for several reasons. First, he is on good terms with the legal teams on both sides, and has the opportunity to be exposed to the full force of the logic on both sides. Secondly, he was hoping that this case would test the parameters of the current discussions on initial interest confusion, extended passing off and the interrelation of geographical indication protection and regular protection of reputations. As it turned out, this dispute didn't really do much to develop doctrine in any of those directions, but that doesn't matter. The third reason is that this Kat has a long-time and deeply-held affection for yoghurt ...

So what happened in this dispute? To bring recent readers up to speed, Greek yoghurt maker Fage and its UK distributor FAGE had sold "Greek yoghurt" in the UK for many years, enjoying a 95% market share.  Chobani, a US company, made and sold in the US a product that was also described as “Greek yoghurt”. Both FAGE's and Chobani's yoghurts were described as being "thick and creamy" in comparison with ordinary yoghurt. Such thick, creamy yoghurt was derived from ordinary yoghurt by two main industrial processes: (i) straining, which involved the separation and removal of the watery whey, and (ii) the use of thickening agents. 

Almost all the yoghurt sold to the public in the UK in the 25 years before 2012 with descriptions including "Greek yoghurt" on the labels on the pots was strained yoghurt -- and it was made in Greece, like that of FAGE; this labelling appeared to be a matter of convention in the UK.  In contrast, much larger quantities of thick and creamy yoghurt were sold in the UK as "Greek style yoghurt". None of the yoghurt described as “Greek style yoghurt” originated from Greece, the thick and creamy texture of such yoghurt being generally achieved by the use of thickening agents rather than by straining.

In 2012 Chobani began to sell its yoghurt in the UK. FAGE, alleging passing off, sought an interim injunction [noted by the IPKat here]. FAGE maintained that thick and creamy yoghurt was properly labelled “Greek yoghurt” only if it both came from Greece and was thickened by straining, and that there was an understanding to that effect on the part of the yoghurt-eating public so that use of the same phrase to describe yoghurt which was not made in Greece in that way would involve a damaging misrepresentation.  No, said Chobani: the description “Greek yoghurt” denoted no clearly identified distinctive class in the minds of the yoghurt-buying public.  An interim injunction was granted and the action then went to full trial on two issues: 

(i) did use of the term “Greek yoghurt” by Chobani constitute an act of passing off?  
(ii) on a counterclaim for malicious falsehood by Chobani, was a letter sent by FAGE to the Trading Standards Team of the London Borough of Camden actionalbe? This letter asserted that Chobani had breached EU regulations, that it had failed to mark its products with a requisite identification of their place of manufacture, and that it had failed to make it clear that it could not confirm that its yoghurt was free from artificially introduced bovine growth hormone. According to Chobani, these falsehoods were made recklessly and therefore maliciously, and in a manner calculated to cause it pecuniary damage, in particular because FAGE’s letter asked Camden Trading Standards to order the removal of Chobani's product from retail sale pending investigation of those allegations.
Briggs J held on both issues for FAGE. In his view:
  • For any claimant to demonstrate ownership of the requisite goodwill attached to the relevant trade name or get-up, that term had to be associated, in the mind of the public, with a clearly defined class of goods which was sufficiently distinguished from other similar goods by that name.
  • Where, as here, a trade name was descriptive of geographical origin, it had to have an effect that was more than purely geographical, but that effect did not need to be a reputation for higher quality or cachet; nor did the consumer need to know how the product in question was made.
  • The perception that the relevant trading name denoted a distinctive class of product needed to be that of merely some section of the public, and it was for FAGE to show (i) that it had built up a substantial goodwill attached to the trade name “Greek yoghurt” by which they -- and indeed others -- had described their product and (ii) that Chobani's use of the same or a similar name caused or threatened to cause substantial damage to that goodwill. Both these questions were matters of both fact and degree.
  • On the facts a substantial proportion, probably more than 50 per cent, of Greek yoghurt consumers in the UK thought it was made in Greece; the proportion of Greek yoghurt purchasers to whom that mattered was substantial, even if that group of consumers constituted only a modest proportion of yoghurt eaters as a whole. A perception that there was something special about products labelled “Greek yoghurt”, which was less than fully matched for example by products labelled “Greek-style yoghurt”, was entertained by a substantial proportion of British yoghurt-eaters, and probably by a majority of those who were regular buyers of Greek yoghurt -- 95 per cent of which was produced by FAGE.  On this basis FAGE could be said to have shown that substantial goodwill had become attached to the use of the term “Greek yoghurt” as denoting more than merely the geographical origin of the yoghurt.
  • The best evidence of the subsistence of goodwill in the term “Greek yoghurt” was (i) the fact that UK  yoghurt producers had respected the labelling convention for more than 25 years, (ii) the unanimity of the trade witnesses in that respect and (iii) the fact that products so labelled were able to command a premium price, even when not made by FAGE.  This showed that the use of the term “Greek yoghurt” to describe yoghurt not made in Greece involved a material misrepresentation; whether Chobani's yoghurt was made by the straining method commonly used for the production of Greek yoghurt was therefore immaterial.
  • The introduction into the market of a product labelled “Greek yoghurt” but made in the US would obviously damage the distinctiveness of the description “Greek yoghurt” as meaning, inter alia, yoghurt made in Greece. FAGE was therefore entitled to a permanent injunction to stop Chobani passing off its US-made yoghurt in England under the description Greek yoghurt.
  • Chobani’s counterclaim for malicious falsehood failed.  The allegations, even if they were false, were not malicious; nor had they been calculated to cause damage.
The Court of Appeal dismissed Chobani's appeal. Refusing Chobani permission to amend their Grounds of Appeal so as to incorporate some fresh European law points, the Court of Appeal concluded as follows:
  • Chobani sought to persuade the Court of Appeal that many of the trial judge’s findings of fact were wrong. The Court of Appeal disagreed, remarking with regard to several of his findings that they were indeed “unassailable”.
  • Greek Yoghurt, sold as such in the UK, must be made by a straining process so as to remove the watery whey, must contain no additives, and must be made in Greece.
  • The permanent injunction remains in place, preventing Chobani from selling in the UK as Greek Yoghurt, a strained yoghurt made in the US.
  • Chobani was also ordered to pay FAGE’s costs of the appeal with a substantial amount to be paid on account straight away .
  • Chobani was refused permission by the Court of Appeal to appeal to the Supreme Court on the basis that, in deciding the main extended passing off issue, the Court of Appeal had applied settled principles; and on the European points that the arguments in favour of the finding that Greek Yoghurt is not within the scope of Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs were overwhelming and, furthermore, this issue did not raise a point of general public importance.
Chobani then applied to the Supreme Court for permission to appeal. The big news is that this application has been refused.  According to the Supreme Court, ordering Chobani to the costs of this final stage in the keenly-fought litigation, there was no arguable point of law to consider.  The panel consisted of three judges (the President, Lord Neuberger, presided; Lords Reed and Clarke also sat) 

The result of this is that Chobani has to pay FAGE’s costs in the Supreme Court, plus the further instalment of costs from the Court of Appeal order, which works out at an extra £170,000 -- and that's an awful lot of yoghurt -- payable within four business days. No "Greek Yoghurt" product can now enter the United Kingdom unless it fulfils three criteria: it must be made by a straining method, containing no additives or preservatives -- and must be made in Greece).

A generous Katpat goes to Richard Price (Winston & Strawn, the firm instructed by FAGE), for keeping this Kat so well informed -- and Merpel adds her congratulations on what turns out to be Richard's 5-0 score in terms of victories before the House of Lords/Privy Council/Supreme Court; Richard's far too modest to let her tell anyone though ...  

Greek yoghurt recipes here and here, courtesy of FAGE, here

European Patent Reform: a high-power forum may be heading your way ...

MIP: food for thought
While interest in the governance of Eponia (the eponymous Central European fiefdom of the European Patent Office) runs gratifyingly high, as the comments posted to Merpel's Sunday night blogpost testify, a more serious thread of interest in the present and future of the European patent system is not hard to discern either, as it weaves its way through the consciousness of the patent community.  One strand of this thread is an intriguing event hosted in two cities which, between them, hold so much of the fate of the new European patent regime in their hands: it's the Managing Intellectual Property (MIP) magazine-backed European Patent Reform Forum and you can catch it in Munich on 9 September or wait a couple of days and attend it in Paris on 11 September. The significance of the host cities will not be missed on patent practitioners and their clients, or on commentators and lobbyists: the Unified Patent Court, looming large in our minds though not yet in our daily routine, has chosen Paris for the Central Division of its First Instance Court, with  Munich handling mechanical engineering cases.  The "missing" city is London, which will accommodate the court's chemistry and pharma workload -- though it was London that hosted the same organisers' International Patent Forum this March (on which see "A touch of the Waldorfs", here).

Fast food
Having founded MIP back in the early 1990s and then having edited it for some years, this Kat is always happy to see what it's up to, and he's pleased to see that quite a few of his friends, and contributors to his own rival publication, have been pressed into service in the forthcoming Forums. The panel of Munich speakers and participants, which you can see by clicking here, features a convincing blend of in-housers, private practitioners and bureaucrats, as well as a good mix of industrial sectors, and the programme focuses a good deal on the discussion of strategic issues (ie what to do, when and how to do it). A novel feature is what Merpel calls "speed-lunching", since the action-packed morning and afternoon sessions leave just 50 minutes for the traditional mid-day pit-stop and refuelling. The venue for this challenging event is the "Marriott Munich Hotel, Munich" which, from the repetition of the M-word, sounds like an attempt to persuade us that the hotel really and truly is in Munich -- unlike that lovely city's airport, which is actually a short flight away.

Slow food
The Paris line-up (which you can check out here) features many of the same speakers, but with some tactical substitutions to reflect the local terrain: among them is the redoubtable Christophe Geiger, Director of CEIPI in Strasbourg. This day's programme also has the speed-lunching feature, so Merpel hopes there won't be too many escargots on the menu. The venue for the "Paris re-match", as one might describe the second edition of the Forum, is the Paris Marriott Hotel Champs-Élysées, which sounds like a good place for a night out on the town an ideal location for an event of this nature, particularly for some of our American cousins who don't travel too well and like to feel at home wherever they may be ...

Digest the message ...
Now for the nitty-gritty. MIP, out of the kindness of their hearts and notwithstanding their lack of charitable status, are offering FREE attendance for academics and for in-house counsel, patent counsel and R&D professionals. If you don't fall within any of those categories, you're still entitled to a 25% DISCOUNT if you are an IPKat reader who happens to be a private practitioner, consultant or adviser (this works out at €820).  Everyone else -- and there can't be that many "everyone elses" apart from monarchs, footballers and bloggers -- has to pay the full whack, €1,095.

Further information about this useful and highly tempting forum can be obtained by clicking here. To claim your special IPKat reduction, email Alicia Sprott at and quote your VIP Katcode IPK25.

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