For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 23 April 2014

“Quentin, come here!” -- a plea for Tarantino’s copyright litigation in Europe

Feeling depressed for copyright infringement?
Many people may know the sad story of Quentin Tarantino’s ‘Hateful Eight’. For those who don’t, ‘Hateful Eight’ is [or might have been] the American director’s next movie. After finishing the first draft of the script, Quentin confidentially gave the document to six trusted friends to find out how much they liked it. Instead of obtaining feedback like “Sergio Leone would have never used so much tomato sauce”, “Japan again? Seriously?!?” or “cartoons: never considered it?”, the American director found his script leaked on an American gossip website named Gawker. Not exactly “on”, actually: indeed, Gawker just provided the hyperlink to another website that hosts Tarantino’s script on its servers. That threw the director into the deepest sadness. He told to the Deadline:

"I'm very, very depressed … I finished a script, a first draft, and I didn't mean to shoot it until next winter, a year from now. I gave it to six people, and apparently it's gotten out today."

As anyone knows, the best therapy against depression is filing lawsuits, and that is what Quentin did. After racking his brains in vain to identify the bad apple that provided the gossip website with the precious script, Quentin cut the Gordian knot and directly sued Gawker for copyright infringement at the US District Court for the Central District of California. If all this sounds sad, even sadder appears to be the first instance Court’s outcome. As Variety reports, some hours ago Judge john F. Walter held that Tarantino had failed to “adequately plead facts establishing direct infringement by a third party or facts that would demonstrate that Gawker had either caused, induced or materially contributed to the alleged direct infringement”, and that

“nowhere in these paragraphs or anywhere else in the Complaint does Plaintiff allege a single act of direct infringement committed by any member of the general public that would support Plaintiff’s claim for contributory infringement … instead, Plaintiff merely speculates that some direct infringement must have taken place. For example, Plaintiff's Complaint fails to allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement, or, more importantly, how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”

"Quentin, come here!"
The US Judge, however, allowed Tarantino to file an amendment for his contributory infringement claim, which should be filed by the first of May. This Kat feels deep sympathy for the director’s cause and for depression in general. As a few days remain before the first of May deadline expires, he thus asked Merpel to wear the sexy black dress of Anita Ekberg in Fellini’s ‘La Dolce Vita’, dive into the Trevi Fountain and launch a heartfelt plea:


Quentin, we might not have as many surfers as California [which might not necessarily be a bad thing], but we know how to recognise a blatant infringement when we see one. And this is your case! Although you may not know it, thanks to the wisdom of International conventions such as Berne and TRIPs, you own copyright in your script here as well, and from the very moment of its creation [we have never requested registration for art works -- that sounds such a trade mark/patent thing, and the same word “copyrighted” is banned from the Continent]. Under the national treatment principle provided by those Treaties, Quentin, you will be treated like one of us – or even better, considered the proverbial European hospitality.

Not that Svensson.
It might be true that some of us are not familiar with the slippery approach to indirect liability for copyright infringement that you have in the US. But still, who cares -- we have Svensson! As football soccer passionate, Quentin, you will think this is about the Swedish Anders -- but it is not. Instead, it is a rather seminal decision of the Court of Justice of the European Union (‘CJEU’) rendered in February.  In that ruling, the CJEU implicitly held that providing hyperlinks to works whose diffusion was not authorised by the right holder amounts to a communication to the public via the EU exclusive right called “making available” [provided by Article 3(1) of the Infosoc Directive, if you fancy delving into it] and, therefore, to a copyright infringement [all you need to know about it is herehere and here].

Got it, Quentin? We would take your rights extremely seriously -- no need to “allege the identity of a single third-party infringer, the date, the time, or the details of a single instance of third-party infringement” or to explain “how Defendant allegedly caused, induced, or materially contributed to the infringement by those third parties”. Gawker provided the link to the platform that unlawfully hosts your work. You are not fine with that. That’s enough to establish copyright infringement in the EU -- and no need to worry about fair use!

Not that Pinckney.
And if you come to litigate in Europe, Quentin, also normally boring procedural issues may bring some great fun! In a 2013 decision on jurisdiction for copyright infringements committed online [the case is “Pinckney”, on which see here], for instance, the CJEU said that courts have jurisdiction to hear copyright infringement cases whenever the website providing the infringing work is “accessible within the jurisdiction of the court seised”. As the link to your script that Gawker provides for is accessible from all EU Countries, thus, you just have to choose the EU State you like more, sharpen your [juridical] Hattori Hanzo sword and sue your enemies wherever you feel most comfortable [various and diverging natural scenarios, human beings, cuisines and types of weather and Judges available].

Why getting depressed for negative verdicts, after having had your work ingloriously stolen? Quentin, do the right thing! Quentin, come to Europe!

[Join the petition! #QuentincometoEurope, or #QCtEU or #whatsthematterwithJapan]

Tuesday, 22 April 2014

Pipcu prevails, counterfeiter calamities and now YOU can be a trade mark 'intern' on your smartphone!

With Easter now over, we begin another sacred event: the four day working week. To ease you into it, here is a trio of anti-piracy titbits of news and entertainment.
Pipcu prevails, pirates panic
Pipcu – The City of London Police Intellectual Property Crime Unit – has scored a big hit in the eternal fight against online piracy, having forced a major file-sharing site to shutdown merely by sending it a threatening email, reports the BBC and Torrentfreak. Pipcu, in its own words, is an “operationally independent law enforcement unit dedicated to tackling serious and organised intellectual property crime (counterfeit and piracy) affecting physical and digital goods (with the exception of pharmaceutical goods).” Its focus is on online piracy. It has been running since September 2013, based in the City of London (for those who don’t know this is effectively London’s business centre).
Grumpy cat's expression is actually
a result of feline dwarfism
Pipcu has a number of initiatives underway, including its Infringing Websites Lists (or IWL), a blacklist of pirate sites it will share with advertising networks and agencies to discourage them from placing ads on the sites, thus depriving them of their major (if not only) source of revenue. Controversially, the list is not being made public.
It has also been writing angry emails to alleged infringing websites, including The Sports Torrent Network, a popular sports-focused bittorrent tracker providing links to downloads of football (or soccer to the Americans), basketball and Formula 1 events, amongst others. The emails have threatened police action if the sites do not respond although this Kat hasn’t seen the correspondence and so can’t be sure precisely of what offences the sites have been accused. The email sent to The Sports Torrent Network has apparently done the trick without any actual prosecution or even arrest having had to be made – it closed yesterday.
Brand owners baffled at counterfeiter calamities
Counterfeit products are no laughing matter for brand owners. But with thanks to Andrew Digwood for sharing this one, here is an amusing photo list of 30 such products that demonstrate a complete misunderstanding of trade mark law, an ingenious imagination or (in the case of number 20) a desperate need for an educational tour around a zoo. I give you Buzzfeed’s “30 Knockoff Products That Are Almost Better Than The Real Thing”, which includes this gem:
Courtesy of - a fruity line in fashion 
Now YOU can be a trade mark 'intern' on your smartphone!
If the long working days of the city trade mark lawyer simply aren’t long enough for you, or your blackberry just won’t flash its evil red eye at you as regularly as you’d like, help is at hand from indie game developer The Men Who Wear Many Hats in the form of the smartphone game “Intern Saga: Trademark Lawyer”. The game is a parody of, amongst other controversies, the trade mark battle over the word CANDY reported earlier in the year by the AmeriKat here. It sees you take on the role of an intern striving to pay off his or her student debt by sending cease and desist requests to developers uploading infringing games to a fictional app store. To give an indication of what the makers think of lawyers, the opening message tells you “This job is so easy a monkey could do it.” If you have an Android phone, find it here. If you have an iPhone, tough luck – Apple refused to approve it without giving much in the way of a reason: “The concept of the app is not the sort of app we want in the app store” Apple is reported to have told the makers.

Can you earn $100,000 to pay off your student debt?

Tuesday Titivation

This Kat is not used to writing the multi-issue blogposts that are such a speciality of our dear blogmeister.  However, a few things have arrived in his inbox while he was engaged in his Easter aestivation, which are unrelated to each other, and none of which appears to merit a blogpost of its own, and so he is going to try his hand at the multi-issue roundup.

1. Norway to accede to the London Agreement [title updated with apologies]

Thanks to @dustshoveller for this picture
of the procrastipuss, which stops the IPKat writing
Firstly, Katfriend Stein Roar Gjøen from Acapo has let the IPKat know that the Norwegian cabinet has proposed acceding to the London Agreement, effective from 1 January 2015.  This is apparently rather a speedy decision, since the public consultation was completed only in February.  News is available in Norwegian here, and via the joys of Google translate here.  Merpel is amused that the translated title promises "expensive patenting".

2. Transitional Provisions for new Patent law in New Zealand

Hearty Katpat for the much katpatted Chris Torrero for pointing out that the Intellectual Property Office of New Zealand has published information about the coming into force of aspects of the Patents Act 2013 (the Act itself was discussed by the IPKat here).  You can see the information on the IPONZ website here.

3. The Streisand Effect

This moggy does not often read family law cases, but was very taken with the case of  London Borough of Haringey v Musa [2014] EWHC 1200 (Fam) (11 April 2014), in which, despite the explicit instructions of the judge that a prior judgment should be published,  the legal department of the London Borough Haringey caused an administrator at Bailii to removed the entire judgment from the BAILII site.  The judgment ends with the most unusual sentence "On that incredibly melancholy note, and with the utmost despair on my part, I draw the present hearing to a close."

The taking down of judgments from BAILII has led to the establishment of a website dedicated to the recording of cases being deleted from BAILII.  You can read about it here.  It is called after the Streisand Effect, which "is the phenomenon whereby an attempt to hide, remove, or censor a piece of information has the unintended consequence of publicizing the information more widely".

Disappearing judgments are not much a feature of intellectual property law as far as this Kat can remember, but the IPKat welcomes this contribution to judicial openness.

Friday, 18 April 2014

What does the ACI Adam decision mean for InfoSoc system of exceptions and limitations?

A few days have passed since the Court of Justice of the European Union (CJEU) issued its decision in Case C-435/12 ACI Adam [here], ruling that Article 5(2)(b) of the InfoSoc Directive, read in conjunction with paragraph 5 of the same provision [this imported the 3-step test into EU copyright law], must be interpreted as precluding national legislations that do not distinguish the situation in which the source from which a reproduction for private use is made is lawful from that in which that source is unlawful.

As readers will remember, this case concerned the compatibility of Dutch private copying exception with EU law. Article 16 of the Dutch Copyright Act stated that the reproduction of a work or any part thereof would not be an infringement of copyright, provided that the reproduction was carried out without any direct or indirect commercial motivation and was intended exclusively for personal exercise, study or use by the natural person who made the reproduction. 

Interpretation of Dutch law has been in the sense of including also copies made from unlicensed sources, eg unlawful downloads from the internet. The Dutch State Secretary held the view that reproducing works from unlicensed sources should no longer be part of the private copying exception, although these activities should not be punishable. However, at the end of 2012, Dutch Parliament dismissed this proposal, and decided instead to impose temporary private copy levies on certain digital and electronic devices and storage media. 

Litigation ensued before Dutch courts between a number of importers and manufacturers of blank data media, eg CDs and CD-Rs, and two Dutch collecting societies. The former argued that they did not have to pay levies for reproductions from unlawful sources, in that only reproductions from lawful copies could fall within the scope of the private copying exception and, as a result, the amount of the applicable private copying levies should not take into account compensation for harm suffered as a result of copies of works made from unlawful sources. 

No need for an investigation:
the Directive does simply omit to say whether
only lawful or also unlawful

Following two unfavourable judicial outcomes, ACI Adam and other importers and manufacturers brought their case before the Dutch Supreme Court. This decided to stay the proceedings and seek guidance from the CJEU.

As Advocate General Cruz Villalon observed in his Opinion [from which the Court did not depart], although in some Member States (Denmark, Germany, Spain, Italy, Portugal) the law already excludes applicability of the relevant national private copying exception to reproductions from unlawful sources, and some national judges (eg the French Conseil d’État) have interpreted the scope of this exception in the sense of excluding its applicability to reproductions from unlawful sources, whether the private copying exception within Article 5(2)(b) of the InfoSoc Directive may only encompass reproductions from licensed sources was an issue on which the CJEU had not ruled yet.

The Court observed that Article 5(2)(b) does not address expressly the lawful or unlawful nature of the source from which a reproduction may be made. However, when adopting the InfoSoc Directive, one of the objectives of EU legislature was to provide a high level of copyright protection. As a consequence, exceptions and limitations to exclusive rights must be interpreted strictly, and Member States must comply with the three-step test as per Article 5(5) of this directive. In compliance with these principles – notably that of strict interpretation of exceptions and limitations – the private copying exception must be understood as excluding reproductions from unlicensed sources.

The 3-step steps
This conclusion is also compliant with what is required by the 3-step test in Article 5(5). To accept that reproductions for private uses may be made from an unlawful source would encourage the circulation of unlicensed works, thus inevitably reducing the volume of sales or of other lawful transactions relating to the protected works. This would conflict with the principle that exceptions and limitations must not conflict with a normal exploitation of the work and must not unreasonably prejudice the legitimate interests of rightholders.

The outcome of this case is not particularly surprisingThe judgment is however extremely relevant in that it further clarifies [current?] CJEU understanding of Article 5 system of exceptions and limitations.  

The InfoSoc Directive harmonised copyright exceptions and limitations, on belief that – similarly to the case of exclusive rights [discussed also here]differences among the laws of Member States had direct negative effects on the functioning of the internal market, and that such differences would have become more pronounced in view of the further development of cross-border exploitation of works. 

While the rationale of Article 5 is to require a coherent application of the various exceptions and limitations, it leaves Member States the option (the sole exception being temporary acts of reproduction) to provide for certain (21) exceptions or limitations. 

Aww ... If only shopping for copyright
exceptions was this cute
Eminent commentators have held the view that in most cases Article 5 ‘shopping list’ would be composed of categorically worded prototypes rather than precisely circumscribed exceptions, thus leaving the Member States broad margins of discretion at the stage of national implementation. This is indeed what has happened in practice, the Dutch case being a notable example.

To this Kat the current question, however, is whether this is what the InfoSoc Directive actually allows (or allowed) Member States to do, also considering that Recital 32 requires Member States to arrive at a coherent application of Article 5 exceptions and limitations. 

In its decisions in Case C-510/10 TV2 Danmark [here] and, prior to this, Case C-467/08 Padawan [here], the CJEU seemed to suggest that, unless where the InfoSoc Directive leaves it to Member States to fine-tune the scope of resulting exceptions and limitations, it is not possible for them to alter the scope of the exceptions and limitations that they have decided to transpose into their national regimes.

This conclusion appears not only confirmed by the ACI Adam decision, but likely to be even stricter than what those decisions suggested. 

It's all about the market
At paras 33 and 34 of the decision, the CJEU stated that it follows from Recital 32 in the preamble to the InfoSoc Directive that Member States have the option of introducing the different exceptions provided for in Article 5 in accordance with their legal traditions. However, once they have made the choice of introducing a certain exception or limitation, this must be applied coherently across the EU. This is necessary to avoid undermining the objectives of this directive, including that of ensuring the proper functioning of the internal market. Incidentally, compliance with this objective has become central to the achievement of unexpected outcomes in a number of recent CJEU cases in the area of copyright [let's just think of the decisions in FAPL or UsedSoft].

Overall, it appears that Member States’ freedom to fine-tune the breadth of resulting national exceptions and limitations may be much narrower than what has been understood so far. In most cases Article 5 exceptions and limitations would not be just categorically-worded prototypes. 

Above all, as the CJEU appeared to suggest at para 27 of its decision, Member States’ freedom (where it exists) would be just in the sense of limiting the scope of the resulting national exceptions or limitations, not also in the sense of extending it beyond the scope of what is provided in the relevant Article 5 exception or limitation. 

This would follow from Recital 44 in the preamble to the InfoSoc Directive. 

According to the Court, this Recital suggests that when Member States provide for one of the exceptions and limitations referred to by the InfoSoc Directive, the scope of the resulting national exception or limitation could be limited even more when it comes to certain new uses of copyright works and other subject-matter. By contrast, neither this Recital nor any other provision in the Directive appears to envisage the possibility for Member States to extend the scope of the national exception or limitation beyond what is permitted by Article 5. 

Is this the above good or bad news for fans of Article 5? 

Of course, it depends on which side of the copyright debate (and related interests) you wish to place yourself, but if it is true that current Article 5 system - at least in the view of the CJEU - is and should be less flexible than what has been understood so far, and Member States' discretion could be solely exerted to narrow down the scope of resulting national exceptions or limitations, perhaps the time is apt to think whether this is what is best for a European Union, that - thorough its usually outspoken European Commissioners - has consistently expressed its desire to put in place and maintain a competitive and attractive copyright system.

Thursday, 17 April 2014

3D printing: be careful what you wish for?

This blog post will be about taxes. In particular, we will consider whether the utopian vision of "every home a workplace" thanks to 3D printing also contains a dystopian element from the perspective of the public interest in a socially responsible tax system. Before Kat readers immediately decide to eschew the rest of this blog in favour of watching grass grow, engaging in a series of yawns, or doing anything else seemingly more interesting than having a discussion on income taxes, they should remember this: one of the great challenges of any modern government is to maintain a fair tax system whereby those who owe taxes should pay and where the number of those who evade their responsibility is minimal. One may disagree about the scope of public services funded by taxation (consider the Tea Party movement in the U.S.) but, whatever the scope of public spending, it must ultimately be paid for by public tax receipts.

Against this backdrop, this Kat was struck by a comment that he heard made on a recent podcast broadcast, in which it was claimed that at least 20% of the entire US economy takes place in the black market. While this may not reach the proportional size of the black market attributed to national economies such as Greece, Spain and Italy, the figure seemed to signal an increasingly expanding hole in the foundation of the US tax collection system. And it got this Kat to wonder—might not the world of innovation, invention and creation contribute to this phenomenon? From there, it was a quick leap to the projected brave new world of 3D printing, with every man and woman, within the confines of the home, simultaneously both a potential manufacturer and consumer. Let’s think about classic mass manufacturing. Machinery is bought, increasingly skilled labour (and perhaps proprietary IP) is brought to bear on manufacture, and goods are then produced and sold.

Within this paradigm, taxable income is generated at a number of sources. The fact that the manufacture is mass imposes a material degree of tax discipline on the actors involved. Seen in this way, the prospect that 3D printing will turn every home into a potential workplace disrupts this arrangement. True, the manufacturer of the 3D printer will sell its IP-protected (more or less) product (and pay tax on the income generated), as will the purveyor of the materials (also perhaps enjoying IP protection) used to enable the 3D manufacture (and pay tax on the income generated). The software files used to instruct the 3D printing machine, if not freely available to the public, will also generate revenues (and taxes). So will various ancillary services that will develop around this core ecosystem. But, and it is a big “but”, the actual product that is made will not be sold, not wholesale, not retail, not at all. Within the confines of the home, it will be made and then consumed, all without generating any taxable revenue. As such, there will be even fewer tradable goods (about which Nobel Laureate in Economics, Professor Michael Spence, here, has brought to our attention) both within and between countries. If so, and on one view of 3D printing, the greater the success of 3D printing at the private level, the potentially greater is the harm to the legitimate public coffers.

This Kat recognizes that this focus of the potentially deleterious impact of home-bound 3D printing deviates significantly from that which is typically expressed. Thus, especially from the IP perspective, what is of concern is that home-bound manufacture enables a new vista for infringing various third-party IP rights and thereby depriving of such rights holders of their just compensation. This Kat does not disagree. In the past, the sheer impossibility of enforcing IP rights when the alleged wrong-doer is acting within the confines of his home, as well concern over invading one’s privacy, has led to exceptions for private copying and the like, garnished a bit with a levy sometimes imposed on the manufacture or sale of the devices used for such copying, the better to compensate rights holders with.

But the loss of income that has accompanied this (mostly copyright-focused) approach seems hopelessly over-manned when we consider the future possibility of every man and woman being a potential home manufacturer made to order. This vision, taken its logical conclusion, could lead to a situation where the black market is not only based on tax evasion largely in virtually untraceable services but becomes a structural by-product of the way that goods are made and consumed. Solutions anyone?

Red and yellow and pink and green… or just black and white? Important new European Common Practice on black and white trade marks

Having been announced back in November’s Alicante News, details were published on 15 April in this Common Communication of the new European trade mark Common Practice as regards black and white trade marks, and how they are to be compared to colour versions of the same. In this Kat’s view, this is a highly significant change in practice that will affect many trade mark owners, perhaps adversely. Its aim is to ensure common trade mark practice throughout Europe, but as you’ll see below there’s something of a bull in a china shop to how supposed consistency is being achieved.
It means terrible disaster for the world of
trade marks, Rainbow Cat, terrible disaster!
What follows is an explanation of what is and isn’t changing, where it is changing, when and in respect of what. In short, practice is changing some places, where the scope of protection a black and white mark provides will be significantly less than it used to be. Elsewhere it won’t be changing either because the Member State isn’t interested or it can’t legally change. In some places the change will apply even to pending application and proceedings, elsewhere only to new ones. Sorry to spoil the ending, but this Kat’s not impressed.
Three things in scope, six out – plus six countries who aren’t having anything to do with it
Three issues are in scope:
1.    Priority: is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
2.    Relative grounds: is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour?
3.    Genuine use: is the use of a colour version of a trade mark registered in B&W/greyscale (and vice versa) acceptable for the purpose of establishing genuine use?
Six are out of scope, and so remain subject to local practice:
4.    Priority: is a trade mark in colour from which priority is claimed identical to the same mark in B&W and/or greyscale? (so the question the other way around is not addressed).
5.    Relative grounds: is an earlier trade mark in colour identical to the same mark in B&W and/or greyscale? (so again the question the other way around is not addressed).
6.    The assessment of similarities between colours is not addressed including the question: is an earlier trade mark in B&W and/or greyscale similar to the same mark in colour?
7.    Acquired distinctiveness: where marks registered in B&W that have acquired distinctiveness in a specific colour due to extensive use (the Specsavers scenario – see links below).
8.    Colour marks per se.
9.    Infringement issues (although one would expect the new practice for relative grounds at 2. above would impact on infringement as well – again see below).
The common practice is only common to a degree:
Italy, France and Finland have not participated. Sweden, Denmark (and Norway) opted out of implementing the practice due to legal constraints. The statements those last three states have given suggest that as their existing laws provide for black and white marks to cover all colours, they are not in a position to adopt a change in practice without new legislation.
Alright, get on with it – what is the common practice?
The world's most famous black and white cat
If you’ve got your head around what this isn’t about, here’s what you need to know.
1.    Priority: is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
The new Common Practice explains that:
“A trade mark in B&W from which priority is claimed is not identical to the same mark in colour unless the differences in colour are insignificant.
A trade mark in greyscale from which priority is claimed is not identical to the same mark in colour or in B&W unless the differences in the colours or in the contrast of shades are insignificant.“
The gist of this change appears to be that an applicant’s ability to claim the usual six months priority under the Paris Convention will be lost if the earlier mark is in black and white while the later mark is in colour.
“Insignificant” means differences which are “so insignificant that they may go unnoticed by the average consumer”, the Court of Justice of the European Union’s (CJEU) identity test in Case C-291/00 LTJ Diffusion. The Common Communication provides that (its emphasis) “an insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon a side by side examination of the marks.”
2.    Relative grounds: is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour?
The new Common Practice explains that:
“An earlier trade mark in B&W is not identical to the same mark in colour unless the differences in colour are insignificant.
An earlier trade mark in greyscale is not identical to the same mark in colour, or in B&W, unless the differences in the colours or in the contrast of shades are insignificant.“
So the effect is that if you have an earlier mark in black and white, if you file an opposition against an application for the mark in colour then your earlier mark will not be considered identical. The Common Communication takes the view that a black and white and coloured version of the same sign should now only be considered identical under “exceptional circumstances”, applying the “insignificant differences” test above.
3.    Genuine use: is the use of a colour version of a trade mark registered in B&W/greyscale (and vice versa) acceptable for the purpose of establishing genuine use?
Art 10.1(a) of the Trade Marks Directive (Directive 2008/95/EC) makes clear that use of a trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered constitutes use of the mark as registered. The new Common Practice explains that:
“A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met:
a) the word/figurative elements coincide and are the main distinctive elements;
b) the contrast of shades is respected;
c) colour or combination of colours does not possess distinctive character in itself and;
d) colour is not one of the main contributors to the overall distinctiveness of the mark.
For establishing genuine use, the principles applicable to trade marks in B&W also apply to greyscale trade marks.”
This purports to follow the guidance of the General Court in Case T-152/11 “MAD” (sadly not available in English, although referred to in the current OHIM Guidelines on Proof of Use, see page 41).
What is the meaning of this??!
Those behind this Common Practice, led it would appear by OHIM, take the view that the concept of identity is one that needs to be interpreted strictly, in line with the decision in LTJ Diffusion.
The Common Practice must be implemented within three months of 15 April, so 15 July. OHIM will implement it with effect from 2 June 2014.
The impact of this is likely to be significant. The new practice will be applied by all 22 trade mark offices which have signed up plus OHIM to all applications and proceedings filed after the implementation date. However, in some offices, including the Benelux and German offices and OHIM, the practice will be applied on the implementation date retrospectively to all pending applications and proceedings. This is controversial to say the least. It means that an applicant that has already paid its filing fee may find it is now going to get less than it applied for. An opposition or cancellation may suddenly take on a different complexion, and the party expecting to win might suddenly find itself on the losing side.
Brand owners may now need to review their entire portfolios, especially those heavy in devices and logos and where colour is an important part of their brand image. A portfolio with a handful of black and white registrations will now provide a much narrower scope of protection than a comprehensive portfolio with numerous colour variants of marks. That sort of protection just got a lot more expensive. More filings equal more fees for the offices, OHIM and, this Kat supposes, lawyers, but ramping up the price for no gain based on a desire for consistency that won’t even be achieved (because Italy, France, Finland, Sweden, Denmark and Norway are having nothing to do with it) doesn’t seem fair. Merpel’s not holding back – she thinks it’s outrageous.
So is it all down to similarity now?
Taking a closer look at the impact on relative grounds oppositions and cancellations (of most interest to this Kat who spends a lot of his time litigating trade marks), it is worth taking a step back. The new practice does not say that a black and white version of a mark can’t be used to successfully oppose a colour variant. It won’t be as easy as it was: depending on the practice in the particular office concerned, before the two would be treated as identical. Now in most cases the opposer will need to argue the variants are confusingly similar. That’s a much tougher ask, potentially requiring evidence of confusion or a likelihood of the same. In some cases this won’t be a problem, but this Kat can recall disputes he’s been involved in where it could break a case that would previously have been a dead cert.
Nyan Cat - link below for those
who've never seen it in action
Infringement issues are expressly out of scope of the common practice. But it can’t be right that there is now one rule for relative grounds and one for infringement. Shouldn’t they be the same? So anyone now trying to assert a black and white mark against a colour variant (or something similar in colour) must now be in a much more challenging position. Or will marks registered prior to the change be treated under the old practice and new ones less favourably? Will acts which are infringements today cease to be come 2 June onwards?
It may take a while, but the CJEU is bound to be called open to look at this at some stage. The issue pervades all aspects of trade mark law and seems to be far too significant to be left to the offices themselves to decide. This is a question of law – not practice – and the scope of protection provided by a trade mark. Alternatively, might this be the subject of a judicial review in one or more jurisdictions?
Where is this actually a change?
The Common Communication implies that the change is not going to be a change everywhere, and that some offices already work in this way. This Kat does not know which, and speaking to his colleagues gets the impression that it is far from obvious that the change moves in the direction of the majority.
Speaking from an English law perspective, the new practice goes very much against the law here. In Specsavers International Healthcare Limited & Others v Asda Stores Limited [2010] EWHC 2035 (Ch), Mr Justice Mann in the High Court held at paragraph 119 that (emphasis added):
“If the registered mark is limited to a colour, then the mark that is used has to be compared, as used, to the mark that is registered, as registered (and therefore in colour). If the registered mark is unlimited as to colour then it is registered for all colours. This means that the colour of the offending sign becomes irrelevant. It will not be possible to say that its colour prevents there being an infringement. At this point one can take one of two courses, each of which ought to have the same result. The first is to imagine the registered mark in the same colour as the offending sign. The second is to drain the colour from the offending sign. Either way one then has the material for comparison. One could even imagine them both in a third colour. It does not matter… As a matter of visual convenience it seems to me to be easier to imagine the registered mark in a colour than to imagine the offending sign drained of colour, and I propose to adopt that course.
The English Court of Appeal is of the same view, see paragraph 96 of the appeal in the same case Specsavers International Healthcare Ltd & Others v Asda Stores Ltd [2012] EWCA Civ 24 and Jacob LJ in Phones4u Ltd & Anor v Phone4u.Co.UK & Ors [2006] EWCA Civ 244 at paragraph 70.
Is the UKIPO, OHIM et al empowered to ignore the law and the practice that has been adopted here (and elsewhere) for many years?
Readers will be clear that this Kat is pretty bemused (not to mention frustrated) by all this, and does not think he is alone (and Merpel is not the only company). Perhaps readers would, be they in agreement or otherwise, add a comment on how the present approach in their jurisdictions differs (or does not differ) from the new Common Practice. 
Nyan Cat. Careful if you have your sound turned up loud...

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