For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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

Monday, 30 March 2015

Litigation with friends: a Scramble for Scrabble in the Court of Appeal

It occasionally happens that an important case comes along for which there isn't an available Kat to write a blog-post. Conflicts of interest can take their toll. So it was here, that last week the Court of Appeal for England and Wales handed down a big and keenly-awaited decision in a dispute which, the blog team felt, required a more objective eye and cooler head -- so it was with delight that the IPKat was able to call upon our former feline guest colleague Darren Meale and ask him to do the honours for us.  Thankfully, Darren was able to oblige. This is what he wrote:

Litigation with friends: a Scramble for Scrabble in the Court of Appeal 
This case is about trade marks, and infringement thereof. Mattel makes everyone’s favourite word-forming board game, Scrabble (although this ex-Kat prefers Bananagrams). Zynga, the online social games company, operated SCRAMBLE and SCRAMBLE WITH FRIENDS, games sharing the essential elements of Scrabble. Mattel sued Zynga for trade mark infringement and passing-off. 
Zynga’s sign
Mattel’s Community trade marks (CTMs)
     
SCRAMBLE
SCRAMBLE
SCRABBLE
(and unregistered rights in SCRABBLE)
The rights in play are shown above. This was all about similarity (or otherwise) of marks and signs: Mattel’s registrations clearly covered what Zynga was using its sign for – electronic games. 
At first instance, covered by the IPKat here, Peter Smith J (English judges usually only get a surname – unless there is another judge around with the same one, like, in this case, Sir Andrew Smith) dismissed almost all of Mattel’s claims: there was no infringement of Mattel's two SCRABBLE marks (and no passing off) by the use of SCRAMBLE or SCRAMBLE WITH FRIENDS. Although Mattel's SCRAMBLE mark was infringed, it was invalid and/or liable to be revoked, because it consisted of a sign which may serve in trade to designate a characteristic of the goods, had become customary in the language or in the bona fide practices of the trade and had become the common name in the trade for a product in respect of which it was registered. The only success for Mattel at first instance was in respect of Zynga’s logo – the twisted “m” made the logo look like a “b”, said the trial judge, meaning that it read SCRABBLE, so it was an infringement of Mattel’s SCRABBLE CTMs. Overall, a win for Zynga.
Both sides appealed. On Friday, Floyd LJ gave the leading judgment (with which Patten and Tomlinson LJJ agreed) in JW Spear & Sons Ltd & Others v Zynga Inc [2015] EWCA Civ 290. This time, Mattel came out on top, with a review of the trial judge’s judgment that could readily be described as excoriating. The validity of its SCRAMBLE CTM was reinstated and the finding of infringement by Zynga’s SCRAMBLE and SCRAMBLE WITH FRIENDS signs stood. There was still no infringement or passing off so far as SCRABBLE v SCRAMBLE was concerned, however. Zynga’s consolation prize was a finding that, in fact, its twisted “m” logo did not infringe on Mattel’s SCRABBLE rights.
In justifying its interference with the trial judge’s findings, the Court of Appeal stated that 
“By focusing, almost to the exclusion of everything else, on the attitudes and actions of the two protagonists to the dispute, it seems to me that there is force in Mr Silverleaf's submission that the judge has lost sight of the underlying exercise which the jurisprudence of the CJEU required him to undertake… perhaps the most telling indication of the extent to which the judge had not fulfilled his basic task is the length of Zynga's respondent's notice, which invites the court to uphold the judge's judgment on the basis of a long list of matters about which the judge made no factual findings at all”.
The following five questions were addressed in the appeal judgment:
1.       When considering infringement, can a trade mark owner rely on contextual matter extraneous to the mark?
2.       Is there a minimal threshold of similarity required before the Court is empowered to consider whether there is a likelihood of confusion?
3.       Was SCRAMBLE descriptive or generic?
4.       Was there infringement of the SCRAMBLE CTM by SCRAMBLE and SCRAMBLE WITH FRIENDS?
5.       Was there infringement of the SCRABBLE CTMs by SCRAMBLE and SCRAMBLE WITH FRIENDS?
I deal with each below, but first, a few facts.
A few facts
SCRABBLE launched in the EU in 1954. By 2010 over half of UK households owned a SCRABBLE game. Half a million people outside North America play Scrabble on Facebook. 2.4 million people have downloaded the SCRABBLE app for iOS. Zynga started in 2007 and is now the world’s largest social gaming company. SCRAMBLE launched in 2007 as a Facebook game and evolved over time. SCRAMBLE WITH FRIENDS arrived in June 2012 by which time it was very similar in game-play to SCRABBLE.
1.       The context question
When considering infringement, can a trade mark owner rely on contextual matter extraneous to the mark? Only to an extent, holds the Court of Appeal.
It was common ground that the context in which the allegedly infringing sign is used has to be taken into account: see Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24. But what about the context in which the proprietor’s mark is used?
Mattel wanted to rely upon features such as the fact that they had used SCRABBLE together with tiles, numbers and premium word scores and a "woodland green" background colour (which sounds like a hybrid trade mark and passing-off claim), and it was rejected by the Court of Appeal. The idea had already been so rejected in L'Oréal v Bellure [2007] EWCA Civ 968, but in a referral by the Court of Appeal in Specsavers, the Court of Justice of the European Union (CJEU) held that where a mark registered in black and white had been used in a particular colour combination and the public had become aware of such colour combination, it would be illogical to disregard that awareness when assessing likelihood of confusion. Thus some extraneous matter, beyond the mark as registered, could be taken into account. Floyd LJ described the Specsavers principle as allowing consideration of the use that had been made of the mark itself in a colour or colour combination. Mattel sought to develop the Specsavers principle further, to include what Floyd LJ described as “matter which has been routinely and uniformly used "in association with the mark”. No, said Floyd LJ, that was to take Specsavers too far.
2.       The threshold question
Is there a minimal threshold of similarity required before the court is empowered to consider whether there is a likelihood of confusion? No, holds the Court of Appeal.
This came up because Peter Smith J had held that SCRABBLE was not similar to either SCRAMBLE or SCRAMBLE WITH FRIENDS, a decision which seemed odd to me. How can two words differing by just one letter, in the middle, not be similar at least to some degree?
Back in L'Oréal v Bellure NV [2006] EWHC 2355 (Ch), the High Court had held that there was no minimum threshold of similarity. It was a question of degree. The Court of Appeal reviewed four CJEU decisions which Zynga said cast doubt on L'Oréal: Riha Weser-Gold, Ferrero, Lufthansa Airplus and Kaul. Those cases did not change the conclusion reached in L'Oréal. Instead they suggested the following (paragraphs 58 and 59 of Floyd LJ’s judgment):
“Thus I do not consider that any of these cases provides direct authority which suggests that there is a minimum threshold of similarity. The cases suggest instead that overall similarity is a binary question. Where there is some overall similarity, even faint, then it is necessary to carry out the global assessment, taking account of all relevant circumstances. Moreover, in such cases, the enhanced distinctive character of the mark may play a role in increasing the likelihood of confusion.
On the other hand the cases do show that the General Court has said that where there is (a) average visual and phonetic similarity, but no conceptual similarity (Wesergold), or (b) a number of visual and phonetic features which precluded the signs from being perceived as similar (Ferrero), or (c) no visual or phonetic similarity but a low degree of conceptual similarity (Lufthansa), or (d) a common suffix (Kaul), there may yet be no similarity overall between mark and sign. I have no difficulty with these conclusions: it is only overall similarity which counts.”
3.       Was SCRAMBLE descriptive or generic?
Zynga argued that the SCRAMBLE CTM consisted of a common word in English meaning (i) to move with urgency or panic (ii) to struggle eagerly or unceremoniously for possession of something and (iii) to get or gather something with difficulty or in irregular ways. Secondly, it was asserted that it had been commonly and extensively used by third parties, both before and after the date of registration, in relation to a range of physical and electronic board games where the user is required to make one or more words from scrambled letters. As Floyd LJ put it, there were two alleged meanings of SCRAMBLE, "the rushed activity meaning" and "the jumbled letters meaning".
At first instance, Peter Smith J invalidated the SCRAMBLE CTM because, he held, it was descriptive of what was required in the Zynga game - namely a scramble for words made up by letters in a fixed period of time and because "SCRAMBLE" was in common use for word games in apps for these types of game.
Floyd LJ addressed the two alleged meanings. He looked at evidence of the use of the term “word scramble” in the United States. He looked at an American game SCRAMBLE!, a 1977 book which detailed a pen and pencil game could “Scramble” and a 1975 book talking about “Word Scrambles”. But overall he was not convinced, and concluded that “Although there is quite a degree of descriptive allusion in the mark SCRAMBLE, I do not regard its impact as being so far towards the descriptive end of the spectrum that it was unregistrable” as being descriptive. So far as it having become a customary or common term was concerned, he held that the evidence did not come near to establishing that, as of 2007, there was any customary use or established practice in relation to "scramble" in the EU.
With those findings, the Court of Appeal reversed the first instance decision and upheld the validity of the mark. It is always easy to say such a thing as a commentator, but for my part I do not understand how Peter Smith J could have found, on the evidence before him, that SCRAMBLE had become a customary or common term for word games. The descriptive allusion is there, but it is far weaker than it needs to be to render the mark invalid.
4.       SCRAMBLE v SCRAMBLE and SCRAMBLE WITH FRIENDS
The Court of Appeal agreed with Peter Smith J. This one was a no-brainer: confusion was not just likely, but inevitable. The addition of WITH FRIENDS would not be adequate to avoid confusion. With Mattel’s CTM now back to life, Zynga infringed it.
5.       SCRABBLE v SCRAMBLE and SCRAMBLE WITH FRIENDS
The Court of Appeal agreed with Mattel that Peter Smith J’s conclusion that SCRABBLE and SCRAMBLE were not similar “cannot be supported” [at this point Merpel sighs “That’s a relief!”, as does just about every trade mark practitioner in the EU]. Instead, held Floyd LJ, there was an obvious degree of visual, phonetic and conceptual similarity between the two marks.
However, he was not moved to find a likelihood of confusion. He reviewed all of Mattel’s evidence in this regard, much of it coming from the Internet – tweets and game reviews/comments in which people appeared to mix up SCRAMBLE and SCRABBLE. One example was "My mistake – Scramble IS the right word for the game I was thinking of … thought it was Scrabble". But he also took into account the extent of side-by-side use of mark and sign. Zynga's use of SCRAMBLE had been extensive and pervasive. Floyd LJ said that there was an obvious argument that, if there was real likelihood of confusion between mark and sign it would have come to light by the time of the trial to a very great extent. In the end, this argument convinced him, and he concluded:
“I am not persuaded that it gives sufficient support to Mattel's case to justify allowing the appeal on infringement of the SCRABBLE mark. The principal reason for that conclusion is that the extent of side by side use would be expected to have produced far more abundant evidence of confusion by the date of trial.”
Floyd LJ also held that there was no infringement in respect of the twisted “m” in the SCRAMBLE WITH FRIENDS logo. Peter Smith J had employed a “quick glance” test, holding that “it is possible (as some of the evidence showed) that a quick casual look would give the impression that the word is not "Scramble" but "Scrabble" with a B on its side”. That was not the test, held Floyd LJ. If the average consumer really read the “m” as a “b”, there should be more evidence of actual confusion. In its absence, he overturned Peter Smith J and found no likelihood of confusion.
He then went on to dismiss quickly Mattel’s claim based on its reputation for SCRABBLE as he was not persuaded that Mattel had proved that unfair advantage had been taken of, or detriment to the distinctive character or repute had been caused to, the SCRABBLE CTM.
A note on Mattel’s “tile” CTM
This was originally relied upon by Mattel alongside its word marks, but by the time the case came to trial it had been separately declared invalid by both the High Court and the Court of Appeal.
A final remark or two
There’s nothing particularly ground-breaking about this dispute. The Court of Appeal declined to push the boundaries of the contextual analysis permitted by Specsavers. It also reversed several of Peter Smith J’s more surprising findings, including that SCRAMBLE and SCRABBLE are dissimilar, a decision which I wouldn’t expect any self-respecting trade mark lawyer in the land would agree with. Ultimately, Mattel won the case because it had a CTM for SCRAMBLE covering electronic games and Zynga used the sign SCRAMBLE for electronic games. Shame it took the parties three years, 14 court days and no doubt hundreds of thousands of pounds in costs to work that out.
Something unsatisfactory remains about the Court of Appeal’s decision –- most trade mark practitioners, if asked, would advise that SCRAMBLE used for electronic games would infringe a CTM for SCRABBLE used for electronic games -- the marks are obviously orally and visually very similar, with some conceptual differences known to English speakers, but not many throughout the EU, and the goods are identical. While Mattel appears to have won overall, it probably ought to have won on this point as well, particularly given the enhanced protection available to a mark with reputation.
Thanks, Darren!

It's not over till the Pink Lady sues: crunch time for apple appeal and application

When it comes to IP litigation in Europe, courts are becoming increasingly user-friendly. As national courts in different jurisdictions vie with one another to attract forum-shoppers, and as computerisation of files and pre-trial case management bring down both the cost and the time spent litigating, the courts are definitely on the up-and-up. But what of proceedings before rights-granting offices?  Proceedings before the European Patent Office are often slow, complex and unpredictable in both procedural and substantive terms. The Office for Harmonisation in the Internal Market (OHIM) has sometimes been held up as a better example of how rights can be granted and administered, though the comparison is an unfair one because the subject matter of patent applications is so much less easy to grasp. Bearing this in mind, Case T 378/13 Apple and Pear Australia Ltd and Star Fruits Diffusion v OHIM, Carolus C. BVBA is a 25 March decision of the Fourth Chamber of the General Court of the European Union which should be carefully studied by businesses and traders who live in a real world in which brands are litigated in courts but administered by bureaucrats.

In short, back in October 2009 Carolus applied to register as a Community trade mark (CTM) the word sign ‘English pink’ for ‘agricultural, horticultural and forestry products (neither prepared nor processed) and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’ (Class 31). In April 2010 two businesses -- Apple and Pear and Star Fruits Diffusion ('the opponents') -- challenged this mark's registration for all the goods for which registration was sought. The opponents relied on three earlier CTMs for goods in Class 31: (i) the word mark PINK LADY, registered for ‘agricultural, horticultural products, including fruit, grains, plants and trees, in particular apples and apple trees’; (ii) a figurative mark, depicted on the left and designating inter alia ‘fresh fruit; apples, fruit trees; apple trees’; (iii)  a figurative mark (below, right) registered for ‘agricultural, horticultural products, including fruit, grains, plants and trees, in particular apples and apple trees’.

Said the opponents, on account of the similarity of  'English pink' to their  marks and the identical nature of the parties' respective goods, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of Regulation 207/2009 on the Community trade mark; additionally, given the reputation of the earlier trade marks, the use by Carolus of the term ‘English pink’ would, without due cause, take advantage of the repute of their earlier marks under Article 8(5) of the same Regulation.

The Opposition Division rejected the opposition, so the opponents appealed to the OHIM Board of Appeal. Meanwhile, before the Board of Appeal could consider its decision,  the opponents successfully sued Carolus, relying on their earlier Community marks and a further Benelux mark. The court, the Tribunal de commerce de Bruxelles, in its capacity as a Community trade mark court, annulled the Benelux mark ENGLISH PINK and ordered Carolus to stop using that mark throughout the European Union. The opponents sent OHIM a copy of that judgment and, in August 2012, informed OHIM that Carolus had accepted that judgment, which had accordingly become final.

Having wiped ENGLISH PINK of the face of Europe, the opponents must have thought that a triumphant appeal result at OHIM was a formality. In May 2013 the Fourth Board of Appeal of OHIM dismissed their appeal. Examining the opposition as being based on the earlier word mark, the Board held that, since the marks were not visually, conceptually or phonetically similar, there was no likelihood of confusion. In any event, the Board said, the opponents had failed to establish the reputation of their earlier word mark and had not shown that the public associated PINK LADY with them rather than with apples of that variety as produced by any other grower. In reaching its decision the Board only referred to the evidence before the Opposition Division: everything else was too late.

Unsurprisingly the opponents applied to the General Court for annulment of the decision of the Board of Appeal or for it to be altered. This application was based on the failure of the Board of Appeal to take account of the judgment of the Tribunal de commerce de Bruxelles and on the application of the principle of res judicata.

The General Court agreed that the decision of the Fourth Board of Appeal should be annulled, but not that it could be altered. It the view of that court:

* The Board of Appeal had been duly notified several months before the adoption of its decision that a new fact —the judgment of the Tribunal de commerce de Bruxelles — had arisen. However, nowhere in its decision did the Board even refer to the existence of that judgment, much less give reasons for its appraisal of it.

* OHIM's argument that "the Board of Appeal in all likelihood did take account of the judgment" but "did not consider itself to be bound by it as it arose from an action for trade mark infringement" was a belated attempt to state reasons for the Board's decision, which was inadmissible before the General Court.

* As a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible even after the expiry of the time-limits to which such submission is subject under Regulation 207/2009 and OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late.

* It was clear that the judgment of the Tribunal de commerce was a relevant factual element for resolving the case at hand. The Board of Appeal could not fail to recognise that there were essential common points between the factual aspects at issue in the infringement proceedings initiated and the opposition proceedings brought to contest the registration of the mark sought. The parties to both sets of proceedings were identical and the earlier word mark relied on in support of the infringement proceedings before the Tribunal de commerce was the same as that relied on in support of the opposition proceedings before OHIM. Moreover, this judgment was delivered by a Community trade mark court which was established as part of the autonomous system that is the European Union's trade mark regime. Failure to take it into account meant that the Board of Appeal did not assess all the relevant factual aspects of the case before it with the required diligence. That lack of diligence was such as to lead to annulment of the Board of Appeal’s decision, with the result that the complaint alleging infringement of the principle of sound administration must be upheld.

* The decision of a national court sitting as a Community trade mark court in an action for infringement of a Community trade mark carries no such weight of res judicata for the departments of OHIM in opposition proceedings concerning the registration of a CTM, even if it is identical to the national mark which is the subject of the action for infringement. The existence of a decision such as that of the Tribunal de commerce here even if it had become final, would thus not in itself be sufficient to enable the General Court to ascertain which decision the Board of Appeal was required to take.

* The legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation 207/2009, as interpreted by the Courts of the European Union, and not on the basis of earlier judicial decisions, including national judicial decisions. It followed that a refusal to register must be assessed solely on the basis of the relevant Union legislation; earlier decisions by national courts could, in any event, cast doubt on the lawfulness of the decision at issue.

* Regulation 207/2009 does not contain any provision by which OHIM is bound by a decision by a Community trade mark court delivered in an action for infringement when it exercises its exclusive jurisdiction over registration of CTMs and when, in so doing, it examines oppositions lodged against applications to register CTMs.

* res judicata does not preclude the departments of OHIM or the European Union Courts from examining the possible existence of a likelihood of confusion in the context of opposition proceedings concerning the registration of a new CTM, even though it is identical to a national mark which has been held by a Community trade mark court to undermine an earlier CTM. Since OHIM is the only body empowered by EU law to examine registration applications and to authorise or refuse registration of a CTM, the lawfulness of Board of Appeal decisions must be assessed solely on the basis of the CTM Regulation.

* Carolus's ENGLISH PINK Benelux mark and the CTM it applied for were two legally distinct marks. The judgment of the Tribunal de commerce had the effect of protecting the opponents' earlier word mark only against the effects of the Benelux mark. Since the subject-matter and causes of action in the Benelux and OHIM proceedings were not identical, res judicata could not apply anyway.

* Since the Board of Appeal failed to take account of the judgment of the Tribunal de commerce and to assess the potential impact of that judgment on the outcome of the present dispute, the General Court was not in a position to determine, on the basis of the matters of fact and law as established, which decision the Board of Appeal was required to take and could not therefore exercise its power of alteration. Consequently, the request for alteration of the contested decision must be rejected.

This Kat sees the point, which the General Court substantially laboured: infringement proceedings are not oppositions and national marks are not CTMs.  However, he does not feel that the efficiency of the single market is greatly enhanced by a system that takes such a long and winding way to travel such a short distance.  He finds it surprising that the Tribunal de commerce's ruling, once communicated to OHIM, was not just automatically channelled into into relevant case file but that it was stapled to it by such physical or electronic means that no-one could avoid seeing it and taking it into account.

This Kat would also like to believe that, if a final and unchallenged ruling of a Belgian Community trade mark court has ordered Carolus not to use its ENGLISH PINK mark anywhere in the European Union on the ground that it was likely to cause confusion among purchasers of apples who might think it was something to do with PINK LADY, it should not be difficult for any OHIM instance to conclude that it should not be granted.

Merpel is anxious that there may be a miscarriage of justice in the making here. One of the goods for which Carolus sought registration of ENGLISH PINK was "live animals".  Being only a fictional animal herself, she is nonetheless concerned that none of the goods for which the opponents had registered their earlier CTMs are remotely similar to "live animals" for which, in her humble opinion, registration for live animals should be allowed -- though not for animals that are both pink and English.

Monday miscellany

The Court of Justice of the European Union is now on its holidays and won't be visibly back in action until Tuesday 14 April.  The Kats collectively and individually wish the EU's top judiciary a pleasant break and hope that it will give them an opportunity to repent of their aberrant intellectual property rulings take a fresh view of the issues on which it is so important for them to rule correctly, particularly when they are de facto harmonising European law by filling in gaps left by the slowly-growing web of IP Regulations and Directives. Easter is a very special period in the calendar, when many Europeans have the custom of eating non-distinctive chocolate rabbits wrapped in gold and with a red ribbon.


The IPKat's friends at Bristows have been supplying this weblog with regular reports [so far here, here and here] on that firm's real-time test-drive experiment in litigating a patent dispute under the new Unified Patent Court regime, using the most-up-to-date set of rules.  They have just let him know that the firm's new real-time UPC Action moot page is now live. The Bristows text is the original version of the edited text published on this weblog, with the substitution of its own home-grown test-drive themed cartoons. The next episode in this saga is expected towards the end of April.


European Patent Office: something to read. Following last week's Administrative Council Meeting of the European Patent Office [noted by Merpel here, followed by Merpel's own comments here], the Administrative Council and the European Patent Office's staff union SUEPO have each issued statements. That of the Administrative Council can be read here; that of SUEPO can be read here. Merpel tells the IPKat that she will be continuing to monitor the position.


Around the weblogs. Mike Mireles has rounded off a good week for the IP Finance blog with weekend posts on whether IP might be the key to Kodak's comeback and on what sort of impact Patreon might be expected to have on innovation crowd-funding. On Class 46, former guest Kat Laetitia Lagarde writes on a recent somewhat paradoxical General Court ruling that "force" is weak, at least when it comes to evaluating the distinctiveness of Community trade marks. The 1709 Blog is garlanded with a Ben Challis special on the litigation over copyright protection (or not) in the song "Happy Birthday to You" in the US and Turkey.


WIPO experts roam, but not to Rome ... On 21 April the World Intellectual Property Organization (WIPO) is taking its Roving Seminar team to Turin for a one-day seminar which it is putting on with the support and cooperation of the Italian Patent and Trade Mark Office. WIPO's Roving Seminars are one of the best initiatives the organisation has ever undertaken,  To see how businesslike and productive it is, click through to the programme and you will discover that the three welcoming speakers have been allocated only 15 minutes between them, the rest of the day being dedicated to informative and interactive sessions.  If you are in the area, or fancy a trip to a fascinating city which has a wonderful culture ana a two-week chocolate festival every year, do register!


CEIPI Newsletter. Issue 31 of the Newsletter of CEIPI -- the Centre for International Intellectual Property Studies in Strasbourg, France -- was published on 25 March. Among other things, it advertises that the Centre is looking for an intern to assist noted scholar and Katfriend Christophe Geiger in a research project on human rights and intellectual property. Excellent research and drafting skills are required, so only apply if you are really good.  Details are available here.


Can you help? The IPKat has received a request from a student who is looking for a productive IP experience. He has so many readers that he is sure that there must be at least one or two of them who can help.  This student writes:
I am a final year Master’s degree student in International and Comparative Law at the Tallinn University of Technology (Estonia). My thesis project concerns compulsory licensing of patented pharmaceutical products from the perspective of the TRIPS Agreement and the Doha Declaration. Currently I am living in London and am actively looking for an internship, graduate scheme or entry level position in the IP field.

My deep interest in IP law stems from my belief that IP protection promotes development and progress. Driven by this belief I started my working experience in the National Intellectual Property Office of Georgia (Sakpatenti). My role there equipped me with many skills which are essential to work efficiently in this field. As a Chief Specialist at International and Project Management department I developed good organizational, communicational, reporting, team-player skills, as well as deepening my knowledge ( I hold several certificates in IP Law). I acquired my organizational and team-player skills by organizing number of regional and international projects and conferences, including an International Conference “Focusing on Geographical Indications: Legal Insights and Branding Strategies”, Tbilisi, 2014. I increased my communication skills while negotiating with representatives with a number of international organizations (including WIPO and the EPO) and expanded my network while participating in the International Copyright Conference, Chengdu, China in 2014. I believe that my skills and knowledge would be of substantial benefit to a future employer.

I also studied IP Law, Company Law and Contract Law while during my exchange studies at Chester University, UK (ranked 2:1).
If you would like to contact the student concerned, please email the IPKat at theipkat@gmail.com, quoting the subject line "IP Intern" and your email will be forwarded. The person concerned will happily send you a cover letter, CV and letters of reference.

Sunday, 29 March 2015

Trade mark trolls in Cuba: will 'General Washington' come to the aid of US brands?

Does history repeat itself? Not as such, but it does throw the light of the past on the problems of the present.  This Kat well recalls the problems faced by international brands, returning to South Africa after years of boycotts in the Apartheid era, only to find that other were mischievously using their brands.  There are some parallels with the situation in Cuba today, though the politics are different -- and so too is the legal framework within which problems fall to be resolved.

In this guest post Jaime Ángeles (Angeles & Lugo Lovatón, Dominican Republic) gives an account of the problems faced by US brand owners in Cuba, following a decades-long embargo. Jaime is quite involved in this field, having contributed to last week's New York State Bar Association Online Market on the subject. This is what Jaime tells us:

Trademark trolls and trade mark hijacking in Cuba
The start of negotiations and eventual opening of commercial relations between Cuba and United States is tempting some individuals to jump at the chance to register US trade marks in order to force trade mark holders to negotiate their entrance into the Cuban market. This means the emergence of the Cuban “trade mark troll” and “trade mark hijacking”.


A group of people has started to file applications of US trade marks, including some very famous ones. One of these is a Cuban citizen, Gustavo Alejandro Fuentes Ledo, who has appliedto register at least 65 well known US trade marks including CHASE and NFL; in most cases he has applied for logos or device trade marks.

Impact of the embargo 
While filing an opposition is the legal procedure that allows you to try to stop a published mark going on to the register, Cuba operates a first-to-file rule and many US trade marks were not  previously registered in Cuba due to the US embargo. While many trade mark owners have started litigation in the Cuba Trade Mark Office through opposition or cancellation procedures, the territoriality protection rule of trade marks may go against the US trade mark owners' legitimate interests. However, if the US trade mark can also be considered a copyright work or reproduces a commercial name, there is a good chance that the opposition or cancellation procedure will succeed.

Cuba is a member of the Paris Convention but it is difficult to prove that a mark is well-known in Cuba when products bearing US trade marks have not been present on the Cuban market for many years.
A little-known Convention 
'General Washington'
An interesting and important exception to the territoriality principle in Cuban law can be found in the little-known General Inter-American Convention for Trade Mark and Commercial Protection (Washington 1929). This convention remains valid and in force today in all original contracting countries. Unlike the Paris Convention priority right, it is neither limited in time nor applied as of right. It is unlike the Paris Convention’s “well-known marks” protection in that the senior user does not have to prove fame in the country in which it seeks protection, but merely that the junior user was aware of the senior user’s rights in a member country.

Does Facebook tell the truth? 
We have been searching on the internet for information on Gustavo Alejandro Fuentes Ledo. It seems he is a Cuban citizen who has lived abroad (Spain) is actually based in Tampa, Florida (USA), travelling frequently to Miami. He is behind the portal and publication website elpuenteflorida.com. These are a highly important facts, because Mr Fuentes is not a Cuban citizen who suddenly had a bright idea and created those trade marks in order to start up 65 new businesses in Cuba. It will be difficult for a Cuban trade mark applicant who lives in the United States and who travels around to avoid being found to be a bad faith trade mark applicant, being a person with previous knowledge of all those trade marks.

Mr Fuentes has incidentally invested more than 50,000 Euros in filing fees.

There are positive precedents in Latin America with the implementation of the 1929 Washington Convention. Colombia has the lead so far with international cases [Ann Taylor, Resolución 65875, Superintendencia de Industria y Comercio Colombia; Timberland Company v Stanton & Cia SA, Case 2002-3003-01], with one even being decided by the Andean Community Court of Justice [Nautica, Proceso No.26-IP-97. Tribunal de Justicia de la Comunidad Andina].

Apart from invoking the infringement of an earlier copyright work or of the commercial name of the real trade mark owner, the Cuban Trade Mark Office thus has other means of preventing the hijacking of US trade marks under the Inter-American Convention for Trade Mark and Commercial Protection -- but acceptance of evidence of previous knowledge and the implementation by Cuban authorities of the Washington Convention is crucial. 
Does the Cuban Trade Mark Office have the legal and political ability to enforce the provisions of the Washington Convention? This is a big question, taking into account the litigation of Cuban trade marks in the United States [Only accepted in TTAB proceedings: see "TTABlog Guest Comment: Marty Schwimmer on TTAB's "CUBITA" Summary Judgment Under The Pan American Convention"]. The actions before the Office were commenced late in 2014; we wait with interest and excitement to see how they will turn out.
This Kat is grateful to Jaime for enlightening him, both in relation to the problem and particularly in relation to the General Inter-American Convention for Trade Mark and Commercial Protection, with which he was hitherto unfamiliar.

Polo not the same as football, but Royal Berks give Yanks a partial whipping

It's the polo season again in Luxembourg, which hosts a forum that may have seen more POLO-related litigation than anywhere else in Europe, and possibly beyond (POLO cases that have come before the European Union's top courts so far can be seen here). The latest is Case T 581/13 Royal County of Berkshire Polo Club v OHIM - Lifestyle Equities (Royal County of Berkshire POLO CLUB), a decision rendered last Thursday by the General Court of the European Union in another POLO-related dispute, this time involving a Community trade mark (CTM) application [it seems to this Kat that the word "polo" has the same effect on brand owners as catnip has on cats -- its appeal is irresistible] The story behind the ruling runs like this:

In January 2011, the Royal County of Berkshire Polo Club Ltd ('RCB') applied to register as a CTM the figurative sign reproduced, above right, for inter alia, ‘spectacles, spectacle cases, spectacle frames, spectacle glasses, sun glasses; and accessories therefor’ (Class 9); ‘watches, jewellery, precious stones, precious metals, goods coated in precious metals’ (Class 14); ‘leather goods; imitation leather goods; trunks, travel bags, umbrellas, parasols, whips, harnesses, saddlery, walking sticks’ (Class 18) and ‘articles of clothing, footwear and headgear’ (Class 25). Lifestyle opposed, basing its opposition on four earlier figurative CTMs, all of which were represented by the sign which is reproduced on the left. As luck would have it, Lifestyle's marks were registered for pretty much the same goods as those for which RCB sought to register its CTM (the finding that the parties' goods were identical was not challenged).  Said Lifestyle, applying Article 8(1)(b) of Regulation 207/2009 on the Community trade mark, there was a likelihood of confusion of the relevant consumers on account of the similarity of the respective marks and the identity of goods.

Not much fun without the whip and
harness, not to mention the saddle ...
The Opposition Division rejected the opposition in its entirety. However the Second Board of Appeal uoheld the opposition with regard to all the goods for which RCB sought registration. Said the Board, the goods at issue were everyday consumer goods and were directed at the general public of the European Union, whose level of attention was normal; the image of the polo player, and the words ‘polo club’, in the two signs in question had an inherent enhanced distinctiveness in relation to the goods in Classes 9, 14, 18 and 25 covered by them; the signs at issue had some visual similarity, a degree of aural similarity (which the Board did not further define) and significant conceptual similarity. Since the earlier marks had an average distinctiveness, the Board held that there was a likelihood of confusion between the marks at issue.

Now it was RCB's turn to appeal. RCB applied to the General Court for the annulment of the Board's decision on two grounds: (i) that the reasoning given by the Board was inadequate and (ii) that it was wrong anyway.

The General Court gave the judgment of Solomon, upholding the Board's decision for most goods but annulling it to the extent that it refused the CTM for ‘whips, harness, and saddlery’. Here, in a nutshell, is what the Court said:

Adequacy of Board of Appeal’s statement of reasons

The General Court had no problem finding that the Board's statement of reasons was perfectly adequate, adding that the duty to state reasons for decisions is an essential procedural requirement, the reasoning of a decision consisting in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors vitiate the substantive legality of the decision, but not the statement of reasons, which may be adequate even though it sets out reasons which are incorrect.

Alleged misapplication of Article 8(1)(b) of Regulation 207/2009

The Board was correct in finding that the goods of the respective parties must, in the absence of further details concerning their possible status as luxury goods, be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them. The Board was therefore correct to find that the level of attention of the relevant public was normal [Katnote: believe it or not, the goods in question, which are deemed to be 'goods for everyday consumption' and not luxury goods in the absence of evidence to the contrary, include 'jewellery, precious stones, precious metals, goods coated in precious metals'].

Distinctiveness of the image of a polo player and the words ‘polo club’

The Board of Appeal, relying, directly or by analogy, on the judgments of 21 February 2006 in Cases T-214/04 Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB) [noted here by the IPKat] and T-376/09 POLO SANTA MARIA, EU:T:2011:225, found that the image of a polo player and the words ‘polo club’ had an inherently enhanced distinctiveness in relation to the goods in this opposition, because that image and those words had an imaginative content in relation to those goods, as they did to the goods involved in the cases that gave rise to those judgments. RCB submitted that the image of a polo player and the words ‘polo club’ was descriptive of the sport in question and of the place where it is played. In POLO SANTA MARIA, the General Court found that the image of a polo player had an enhanced distinctiveness in relation to, inter alia, the Class 18 and Class 25 goods pertinent to this opposition, but with the exception of ‘whips, harness and saddlery’ in Class 18, relying on the fact that the goods other than ‘whips, harness and saddlery’ were not directly linked to the playing of polo and that, in that case, the opposing party had proved to the requisite legal standard that the relevant public was familiar with its mark. Thus the Board was wrong to hold here that POLO SANTA MARIA supported a finding that the intrinsic characteristics of the sign were sufficient on their own to endow the image of a polo player and the words ‘polo club’ with enhanced distinctiveness in relation to the Class 25 goods at issue. The Boards finding relating to the enhanced inherent distinctiveness of the image of a polo player and the words ‘polo club’ could not therefore be upheld in its entirety, since the image and those words had
(i) weak inherent distinctiveness in relation to ‘whips, harness and saddlery’ in Class 18, given their close connection to the playing of polo, 
(ii) normal inherent distinctiveness in relation to the Class 25 goods in this action, given that they could be used for polo playing, although there was nothing in their description to the effect that they related to goods specifically designed for that purpose and 
(iii) inherent distinctiveness which was more enhanced, and at the very least normal, in relation to the other goods in this action, given that they had no connection with the playing of polo.
In terms of comparison of the marks, the Board's decision could not be faulted. As for the conceptual comparison, the signs did share a high degree of conceptual similarity, in so far as each referred to a polo club and displayed a similar device of a polo player. Even if, notwithstanding the arrangement of their word elements, the relevant public were to associate those word elements with two different polo clubs, the degree of similarity would be only marginally reduced in so far as both signs would still continue to refer to the idea of polo playing, albeit at different clubs. There was nothing to suggest that the non-English speaking public understood the meaning of the word element ‘Royal County of Berkshire’ in RCB's mark. Nor could any support for the application for annulment be found in the argument that there was no likelihood of confusion between the marks of different football teams.  Apart from the fact that this was wholly irrelevant, RCB did not put forward any evidence at all as grounds for concluding that it was possible to compare the general public’s knowledge of polo with its knowledge of football; nor did RCB explain how the two polo clubs concerned in this case would be comparable, in the eyes of that public, to football teams.

The likelihood of confusion

As for ‘whips, harness and saddlery’, the similarity between the signs was reduced significantly by the fact that their common elements had low inherent distinctiveness in relation to those goods. For that reason, the earlier marks must be regarded as having a low inherent distinctiveness in relation to those goods. Further, those goods were more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, with the result that the aural similarity of the signs would gain in importance. This being so, the Board was wrong to find that there was a likelihood of confusion between the signs at issue in relation to ‘whips, harness, and saddlery’.

This Kat puts his money on an appeal by both parties, not because the General Court's decision is necessarily wrong (though he personally would have regarded the horse-and-rider combination and the words 'POLO CLUB' as having near-zero distinctiveness for anything relating to polo in the absence of persuasive evidence to the contrary), but rather because the potential value of the marks in commercial terms is great and the market for whips and harnesses may well have received a boost in light of the recent launch of Fifty Shades of Grey, with its helpful hints for keeping fit and achieving inner contentment.

How to pronounce Berkshire here
Rules of polo here and water polo here; rules for litigating Community trade marks here and here

Taste of nature in court as plant growers slug it out over red radish patent

We've just had tomatoes and broccoli [on which see last week's Katpost by David, here], and now it's the turn of red radishes [this Kat's favourite is the white radish: for more information on radishes, click here]. From Rita Prins of Cresco BV comes the following episode from The Hague where, this Kat can confirm, it's not just the human rights of European Patent Office employees that come under scrutiny but real patents too. This is what Rita tells the Kats:

The District Court of The Hague delivered a decision in a patent dispute between Cresco and Taste of Nature on 18 March when it held that Taste of Nature’s patent for red radish plants was invalid since the seeds, sprouts and the plant itself -- all of which fell within the scope of the patent -- had been made public to customers of Koppert Cress before the patent was even applied for. Cresco is very pleased with this outcome and will resume deliveries of red radishes to its customers.

These proceedings began in 2011 when Taste of Nature  accused Cresco of infringing patent EP 1 290 938 for red radish sprouts. The patent describes a plant that can exclusively be bred by using essential biological processes (which are excluded from patentability under Article 53(b) of the European Patent Convention).

Cresco was initially successful in resisting an application for interim injunctive relief, arguing that a plant that can only be bred using an essential biological process should also be excluded from patentability. The Court of Appeal decided otherwise and ordered Cresco to stop producing and selling the red radish sprouts. The latest decision, on the merits, has however gone in favour of Cresco.
You can read the decision on the merits, in Dutch, here.

This Kat would appreciate some clarification as to why the decision on the merits was based on lack of novelty rather than on the ground of non-patentable subject matter.  Can anyone give further information, please?

Why and how cats and radishes should be kept apart here and here
Slugs and radishes here
Heartburn and radishes here

Friday, 27 March 2015

Friday fantasies

Mew-sings
Forthcoming events. There's plenty to choose from on the IPKat's Forthcoming Events page, but some events come to this Kat's notice so late that he doesn't have the chance to get them loaded up on to it. One such event, organised by the UK branch of AIPPI, fits that description: it's taking place this coming Monday, 30 March. Titled "What’s the CJEU said this time? A review of the latest SPC musings from Luxembourg", it has much to commend it, apart from the fact that it's either free or cheap (depending on your status) and will be accompanied by refreshments.  If you love (or hate) the idea of extending the term of pharmaceutical patents, this is the place for you to be. Check it out here.


Thank you for the thank-you.  Safe harbour provisions and online service providers: A Discussion Paper is the latest set of state-of-the-art policy thinking from Mike Weatherley MP, former Intellectual Property Adviser to the Prime Minister but who is still placing ideas and advice in the public arena. Quite apart from this slender publication's discussion points and recommendations, there's one little bit that the Kats liked best. Under "Acknowledgem["Oh no they're not!", cries Merpel as we carry her kicking and screaming away from her keyboard]". He then graciously thanks this among others, this weblog.  Thanks, Mike, for thanking us (and by implication particularly thanking Eleonora for her excellent contributions on this topic). Giving credit where due is a great way of earning respect and making friends.
ents" the good Mike writes "I would like to thank the following organisations and individuals for their co-operation on this discussion paper. However, I should make clear that all opinions expressed in the paper are mine


The IPKat thought he should post this sufficiently early that it does not get labelled as an April Fool's story. If you are planning to work over the Easter period, and if your work requires that you access any of the European Patent Office (EPO) online services listed below, you may want to replan your weekend and go searching for Easter eggs rather than for patents.

From 19:00 Central European Time (CET) on Thursday 2 April 2015 to 07.00 CET on Tuesday, 7 April 2015 the following services will be unavailable:
Prior art check
  • Espacenet - patent search
  • European Patent Register
  • Open Patent Services
  • Online Fee Payment
  • My Files
  • Mailbox
  • Administration
  • Common Citation Document
  • PDF downloads from EPO website
  • Searching of EPO website
  • Searching of OJ
  • Searching of Board of Appeal decisions
  • Credit card payments
  • Contact forms
Online filing software, new online filing (CMS), web-form filing and the EPO website itself (other than the listed functions above) will be working during this period. The EPO is of course closed for the receipt of documents on Good Friday (3 April) and Easter Monday (6 April) so any deadlines are extended automatically to the 7th. The EPO's announcement (first spotted by fellow Kat David, who has a paw or two in drafting this item) can be verified here, in case you uspected that this Kat was playing a prank.


Even ordinary people
can become customers
of the UK IPO ...
Ever wonder what IP offices make of their contacts with ordinary people? From the UK Intellectual Property Office's Nigel Hanley (one of the IPO's Katfriends in Residence) comes the following: "As part of our visit programme we summarise the views and information that customers have shared with us during visits within an annual report which can be downloaded from the IPO website". And indeed you can download the IPO's report, Customer Visit Programme 2014, here.

There are probably national offices around the world that are more engaging, more efficient or more geographically convenient than the UK IPO [though there can't be many, to be sure, says Merpel], but there can hardly be any that take their mandate to be helpful and user-friendly than this office. Keep up the good work, adds the IPKat -- especially when it means not only listening to what your users say but weighing it up and acting on it.

The European Patent Office: a Message from Merpel

Readers of this weblog will not fail to have noticed the quantity of blogposts on the legal, administrative and social issues that have turned the European Patent Office (EPO), once a byword for expertise, efficiency and excellence, into the setting for a modern soap opera in which the three 'e's are replaced by the three 'p's: power-politics, point-scoring and paranoia.

By recognising both the "social unease" that exists in the EPO and by timetabling the need to address it, this month's Administrative Council Meeting appears to have provided at least a basis for the various interested parties -- the President, Boards of Appeal, management, staff and unions, and also the members of the Administrative Council themselves if truth be told -- to start afresh by building relationships that are founded on respect, on tolerance and understanding, on listening to one another, plus a leavening dose of humility.

The outcome of the Administrative Council Meeting will certainly not be to everyone's liking. For one thing, it approved the controversial healthcare reforms which, viewed from the standpoint of an objective bystander, appear to be one of the most significant causes of the "social unrest" and which will remain a permanent obstacle to its being remedied. Nor will its acceptance of the proposal for a Board of Appeal Committee, in the face of some sensible and constructive criticisms from the Praesidium and Board members, have done much to enhance respect or confidence for the Council itself. However, a door has been opened and a small step has been taken in the right direction. The question to ask now is whether, now that this opportunity has been created, it will be taken and built upon -- or mocked and spurned.

It is easy to be sceptical and to say that something won't work, particularly if you can do it anonymously by penning comments on a blogpost. It's also rather fun to be able to say to anyone who can be bothered to listen "See, it didn't work. I told you so!"  It's far harder to swallow one's pride, sit down with people you have not hitherto liked, trusted or respected, and talk through the problems that the EPO has to address, both those which it always has to face and those which it has recently created for itself. But that is what this Kat is calling for.

Essentially, what is needed now is for the President and all the other parties involved to make sure that their first concern is the running of the Office, not the ruining of it.  This requires all of them to demonstrate skills of statesmanship, a commodity that has been in short supply of late and a skill that should not be confused for even one moment with bending others to one's will through force. No-one knows the EPO better than those who are involved in its operations at all levels and it is only through them that its salvation will be brought about, not through ideal solutions imposed from outside the Office.

It seems to this Kat that, while the main focus of attention will remain the President, management, unions and employees, the Administrative Council is also on trial. It has finally taken a decisive step but its members should remember that their responsibility does not stop at this juncture. On the contrary, now that they have set the ball rolling, it is incumbent on them to make sure that it continues to do so. If this hard-earned momentum is lost now, it may difficult or impossible to regain. The Administrative Council's members, collectively and individually, cannot now turn their backs on the governance of the EPO and hope that, now that they have had their say, all will be well. They need to know what is happening in the Office, and why it is happening; they need to applaud each step that is taken in the right direction, to offer encouragement and advice where necessary. Some say the Administrative Council is too large to be efficient and that a better, sharper tool is needed for the tasks it faces. Its performance now will be an indicator of whether this is true.

This Kat expects that, unless something very tragic happens, the number of frenetic blogposts on the latest news of the Eponia conflict zone will diminish sharply.  She looks forward to being able to report on happier news in the future, though that will only be the case if the warring factions read and take to heart the third paragraph of this missive -- though naturally she will be swift to point to evidence that any of the players in this game are not taking her message to heart. Maybe one day she will be able to write that the EPO has gone from its three 'e's and three 'p's to the three 'o's: optimism for the future, organisational fairness and transparency, and overall contentment for all who commit their careers and their endeavours to the EPO cause.

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