The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 30 November 2005


This little curiosity cropped up in the Patents Court on 11 October but was noted on subscription service Lawtel only this morning: it's the decision of Mr Justice Pumfrey in a case management issue, Takeda Pharmaceutical and Cyanamid of Great Britain Ltd v (i) Teva UK Ltd and (ii) Sandoz Ltd and Sandoz GmbH, [2005] EWHC 2191 (Pat).

Teva and Sandoz were defendants in separate patent infringement actions brought by Takeda, who owned three patents for pharmaceutical formulations for lansoprazole (a.k.a. Zoton), and by Takeda's licensee Cyanamid. Teva and Sandoz both applied to bring forward the hearing date of a patent infringement action to a date earlier than that already fixed in the second action, the case against Sandoz. The trial of the action was scheduled to take place in April 2006, but Cyanamid notified Sandoz that it intended to apply for interim relief to take effect in December 2005, when the supplementary protection certificate for the basic active ingredient was set to expire but its own patent remained in force.

Teva argued that an earlier trial date would not prejudice Cyanamid, since substantial preparation for the trial of the same issues against Sandoz had already been made. Sandoz supported an earlier trial date since circumstances had changed since the trial date was fixed for April 2006. Given the vast sums that may be made from selling Zoton, the presence or absence of patent protection, even for a short time, gave financial justification to the defendants' pressure to bring the trial forward; the same consideration also meant that any undertakings in damages given by Takeda would be pretty colossal too.

Pumfrey J refused the application. In his view the April 2006 trial date should be left as it was, mainly because there was some doubt as to whether the action against Teva would be ready for an earlier trial. The state of the evidence was unsatisfactory and matters of some complexity could potentially be raised. The trial of the second action would be left as it was, while trial of the first action would take place in the same window already appointed for the second action.

The IPKat is always fascinated to see how judges exercise their case management powers. In this case Pumfrey J did so with some trepidation since, as he put in (para.13): "I find myself in some uncertainty as to the correct approach in this case since ... the competing considerations are both cogent and incommensurable".

Discover Lawtel for yourself here.

French without tears, but what about the lemonade?

The decision is only in French and German, but the IPKat (who, alas, can't handle either language competently) is prepared to guess what it's about. It's Case T-12/04 Almdudler-Limonade A. & S. Klein v OHIM. Correct the IPKat if he's wrong, but it looks like an application to register the shape of a three-dimensional lemonade bottle shape (click here and scroll down for the official version; the bottle as used is illustrated on your right) as a Community trade mark for lemonade (Class 32). The application looks as if it were refused for lack of distinctive character and the appeal was dismissed both by the Board of Appeal and the Court of First Instance for the same reason.

The IPKat mewses on the fact that it would be nice to gain access to the CFI's decision in English too.


The IPKat is grateful to Steve Palmer of Rawlison Butler, who has pointed him in the direction of the BBC’s report that the X Factor copyright/breach of confidence case has settled. In the case (which managed to confuse the blogmeister by having two parties called Simon) Simon Fuller, creator of the Pop Idol musical television talent contest, sued Simon Cowell, one of the judges of Pop Idol after Cowell set up a musical television talent contest named the X Factor.

The terms of the settlement agreement are confidential, but it seems that Fuller’s production company gets a minority holding in certain IP rights in the X Factor, and Cowell has agreed to front five more series of Pop Idol.

The IPKat is horrified by the though of five more series of Pop Idol. Will the format last the course, or will it become jaded and give way to the next big reality TV trend?

Tuesday, 29 November 2005


At last ... it's JIPLP

Issue 1 of the Journal of Intellectual Property Law & Practice, published monthly by Oxford University Press, has now been released. IPKat co-blogmeister Jeremy, who edits it, would like to thank everyone who has been involved in this project from its inception.

Below, left: JIPLP launches with an exciting half-day programme and champagne reception next Monday

The contents of this issue include articles by Olivier Vrins (Altius) and Marius Schneider (Gevers) on trade mark use in respect of goods in transit through the European Union, Sheldon Burshtein (Blake Cassels & Graydon) on whether domain names are property, Ewan Nettleton and Brian Cordery (Bristows) on groundless threats actions, and by Jeremy himself on the deployment of non-IP specialist judges in applications for summary judgment and striking out. Other features include a Practice Point by Ian Karet and Nemone Franks (Linklaters) on the expert witnesses and a State of Art view of IP harmonisation.

Subscribers can read all JIPLP's contents via its advance access feature, which enables them to read articles, notes and comments as soon as they have been set for publication instead of having to wait for them to be printed and posted. Full contents of issue 1 here.


France cuts levy on flash memory devices

Playlist reports that France is to cut its levy on flash memory devices. Although it is legal to copy music for private use in France, copyright-holders recoup royalties through a levy on media that can be used for copying such as blank cassettes and hard-disks. Under the French Commission on Private Copying’s plans, the fee on flash drives will be brought into line with the less fee on hard disks. Apple in particular is expected to benefit from this move. Presently the levy on its 4GB iPod nano is more than twice that on its standard 60GB iPod because the nano utilises a flash memory device which the standard model operates on a hard disk. The IPKat think this sounds eminently sensible. If a distinction has to be made, it would make more sense to base this on the amount of copied music that the device can hold, rather than the technology by which the device operates.

Vodafone seeks to "regain" Russian trade mark

MosNews reports that British company Vodafone is to embark on legal action to have the Russian registration of VODAFONE transferred to it. The mark has been registered in Russia by another company that has not used it. However, the British company does not presently trade in Russia and says that it has no plans to do so.

The IPKat is in two minds about this one. It’s right that famous marks that could cause confusion, even if the mark owner is not trading in the territory in question, should not be used by others. However, the general principle is that if you don’t use your trade mark – or at least intend to use it – you lose it.


Ignorance is still no excuse

This little case skipped across the IPKat's path: it's another summary judgment dispute, Polydor Ltd and others v Woodhouse and others, which came before Mr Justice Lawrence Collins in the Chancery Division yesterday. So far it has only appeared as a note on the Butterworths All England Direct service.

Polydor and the other claimants belonged to the British Phonographic Industry Ltd (BPI), an organisation that represents the interests of recording companies and seeks to protect their collective rights. The identity of the second defendant had been obtained through an order made against various internet service providers, whose internet facilities had been used by P2P file-sharers for infringing copyright in sound recordings.

On obtaining a sample of files downloaded by the BPI, Polydor sent a letter before action to the second defendant. After he failed to provide a satisfactory response, Polydor sued for infringement. The second defendant admitted he owned the P2P software and conceded that his children used it to download music, but said he did not know that his acts infringed, that he made no money from his actions and that he no longer had any music download sites on his computer. Polydor applied for summary judgment against him on the basis that he had no defence to the action, the application being supported by evidence obtained from a shared directory in the second defendant’s name.

Below, left: UK courts pioneer new punishment for ignorant copyright infringers

Lawrence Collins J allowed the application, on the evidence before him. It was clear that the second defendant had the internet account and was the named account holder. Noreover, in respect of 'primary' infringements, it made no difference whether the defendant knew or had reason to believe that what he did was an infringement. The IPKat agrees. While ignorance or innocence are factors that may go to the issue of how the court treats an infringer, they do not affect the fundamental issue of whether he infringes in the first place. Copyright owners and their representatives are now doing a great deal to publicise their rights, which in any event reduces the chance of any infringer persuading a court of his innocence.

Ignorance is no excuse here or here
Ignorance is bliss here

Turning brain-power into big bucks?

The IPKat forgot to blog this yesterday: it's the Telegraph's account of the debate between Cambridge University and its academic employees over control of the intellectual property rights (for which read valuable patents, designs and industrial copyrights) in works created by the latter.

Being an academic himself, the IPKat is thinking better of expressing his views free of charge. Merpel however thinks this review of the issues is pretty well balanced, as are the issues themselves. It's a question of finding the right degree of flexibility to ensure that academics are neither solely responsible for the commercial exploitation of their IP rights nor excluded from the process (or the proceeds) of that exploitation.

How to make the most of brains here and here

Monday, 28 November 2005


Latest IPQ

The fourth and final issue of Sweet & Maxwell's scholarly Intellectual Property Quarterly for 2005 has now been published and it has a decidedly Chinese flavour to it. First, An Qinghu (Director General, China Trade Mark Office) writes on the discovery of a three-dimensional Chinese trade mark, going back to 1917, while Herchel Smith scholar Ke Shao investigates some of the early philosophical and commercial roots of Chinese copyright law.

Sadly there is no article on Chinese patents, but the other two main features in this issue are, in their very different ways, quite thought-provoking. Barbadian scholar David Bradshaw examines the recently-enacted UK provisions on access to copyright works by the visually impaired, while David J. Brennan (University of Melbourne) looks at English patent claims as property definers, incidentally revisiting some of the IPKat's favourite legal history research by Wyndham Hulme.

Message in the bottle

The IPKat found this nice little piece in today's Telegraph about the part played by packaging in the making of an iconic brand. ABSOLUT and RED BULL are singled out for special praise.

The feature is an interview with Rexam's Lars Emilson, who is currently very much in the news as his company prepares to gobble up the bottle-making bit of St-Gobain.

Sunday, 27 November 2005


The NC Times reports that China is to reform its patent laws in order to meet its WTO obligations. The proposals for amendment are due to be presented to the Chinese Parliament next year.

Although China's substantive IP laws are generally thought to meet its TRIPs obligations, enforcement is lax and there can be sizeable delays in obtaining patents because of a backlog in applications.

A Chinese patent

Thus, the following reforms may be on the cards:

  • a simplification of patent application and examination procedures
  • possible adoption of international standards in granting patents
  • improvements to patent protection
  • possible amendments to copyright and trade marks
  • the introduction of specialist IP courts
  • measures protecting China's biological and genetic resources, perhaps through requiring patent applicants to disclose the origin of the materials they use

The IPKat says that IP laws that are strong on paper are worth nothing if they're not backed by suitable enforcement measures. He hopes that China will be in a position to reform its laws in a way that benefits Chinese IPR holders and users, as well as foreign owners and users.


Knight on the tiles

Forticrete Ltd v Lafarge Roofing Ltd is yet another decision by newly-appointed Patents Court judge Mr Justice Kitchin, issued on Friday and trailed on Butterworths' All England Direct online service.

Forticrete, who had a patent for roof tiles, sued Lafarge for infringement by making and selling its Duoplane tile. Lafarge wished to amend its defence, arguing that it was allowed to carry on its allegedly infringing acts in reliance on the defence of the Patents Act 1977, s.64(1) ("Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act"). Lafarge said its Duoplane tile was based on an earlier design which it had made, kept and used in the UK before the priority date of Forticrete's patent.

Forticrete argued that Lafarge's defence had no real prospect of success since the evidence in support of its contentions did not establish that Lafarge had made ‘effective and serious preparations’ to do an act ‘which would constitute an infringement of the patent if it were in force’ in relation to the earlier design of tile. Forticrete added that, that if such preparations were proved to have been done, Lafarge had not established that they were undertaken in respect of the Duoplane tile.

Kitchin J refused to allow Lafarge to amend its defence. He held that the overriding requirement of s 64 was that a defendant had to establish that the activity which he sought to undertake was substantially the same as the activity it had undertaken prior to the priority date, or that it had made effective and serious preparations to do such an act. In this case, while there was an arguable case that the design of the Duoplane tile had been based on an earlier design, the chain of causation was insufficient to attract the protection of s 64 of the Act. This was because the Duoplane tile was neither identical nor similar to the earlier design. Lafarge, accordingly, had failed to establish that it had a real prospect of success under the section.

The IPKat notes that s.64 is raised successfully as a defence only rarely. The narrow circumstances in which its criteria are fulfilled demonstrates why this is so.

Sunrise, here we come

The IPKat's friend Ian Lowe reminds us that phase 1 of the sunrise period for domain name applications starts on 7 December 2005. domain names are European Community based and all applicants must be resident, have their registered office or principal place of business, or be established, within the European Community.

Phase 1 sunrise applicants must also

* be the holder (or licensee) of a valid registered Community trade mark or national trade mark of a member state and
* apply to register a domain name that corresponds to the trade mark in question.

If you wish to take full advantage of phase 1 of the sunrise period, you must arrange to file an application through one of the 500 accredited domain name registrars in advance of 7 December. A list of registrars is available on the EURid website at Each registrar will file applications in the order in which they are received.

An applicant whose application is the first to be received at the EURid registry for a particular name on or after 7 December will then have 40 days to validate rights to the registration by lodging evidence with EURid's validation agent. If the validation fails then the name will be offered to the next applicant in line for the same name.

Phase 2 of the sunrise period starts on 7 February 2006 when holders of other prior rights including unregistered trade marks or company names may apply. The sunrise period closes on 7 April 2006 and applications will then be accepted on a first-come-first-served basis.

The IPKat is trying really hard to get excited about this, but with little success. He wonders how popular names will be with anyone (except EU institutions) in its earliest phases. Merpel says, isn't it a shame that has taken so long. Where was it ten years ago, when it would really have appealed to commercial entities (and to cybersquatters...)?

What is sunrise? Click here to find out
Sunrise lyrics here

Saturday, 26 November 2005


The IPKat has discovered that the following legal delights currently before the ECJ:

  • Hans-Peter Wilfer v OHIM - can patent agents appear before the CFI?
  • SGAE - do transmissions to televisions located in hotel rooms count as communication to the public for copyright purposes?
  • Armin Häupl v Lidl Stiftung & Co KG - acceptable reasons for non-use in trade mark revocation cases
  • Levi Strauss & Co v Casucci SPA - scope of protection against infringement for marks with acquired distinctive character, and the time at which consumers' perception of such marks becomes relevant.

A full list of pending IP cases can be viewed on the Patent Office website.

Friday, 25 November 2005


Don't forget that this Monday, QMIPRI is hosting an interview with Ron Marchant, Chief Excutive of the UK Patent Office.

All are welcome and there's no charge.

It's not too late to say you're coming - email Ilanah for further details.


Does anyone know ...

... what has happened to Case C-4/03 Gesellschaft für Antriebstechnik mbH & Co.KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK)? This was a 2002breference to the European Court of Justice of the following question:

"Is Article 16(4) of ... the Brussels Convention to be interpreted as meaning that the exclusive jurisdiction conferred by that provision on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place or is under the terms of an international convention deemed to have taken place only applies if proceedings (with erga omnes effect) are brought to declare the patent invalid or are proceedings deemed to be concerned with the validity of patents within the meaning of the aforementioned provision where the defendant in a patent infringement action or the claimant in a declaratory action to establish that a patent is not infringed pleads that the patent is invalid or a nullity and that there is also no patent infringement for that reason, irrespective of whether the court seised of the proceedings considers the plea to be substantiated or unsubstantiated and of when the plea is raised during the course of the proceedings."
The Advocate General issued his Opinion in September of last year, which means that the ruling is about eight months overdue now. Has the case settled? Is the question too difficult for the ECJ to rule on? Is the court objecting to it being phrased in such a long and complex sentence? Is it being consolidated with other cases? Or is it stuck in the same dark hole that the BioMild and Postkantoor cases disappeared into before they finally emerged? The IPKat would be grateful for any clue. Merpel adds, does anyone have an English language copy of the Advocate General's Opinion?

Laws of physics foul patent application again

This little case popped up on the Lawtel subscription-based legal information service this morning: Duckett v Patent Office, a ruling yesterday by Patents Court new boy Mr Justice Kitchin.

Duckett applied to patent an invention with a propulsion unit with electric and hydraulic systems which, he said, used an alternator to maintain a battery at full charge while providing further electricity for auxiliary power. The hearing officer ruled that this application contravened the law of conservation of energy as it appeared to create energy out of nothing. In any event, while the invention was novel, it was obvious. The application was refused for not having industrial application (since it broke the law of conservation of energy) and for lack of inventive step.

Kitchin J dismissed Duckett's appeal, holding that the hearing officer's decision was reasonable. The invention was indeed not only obvious but contrary to well-established principles of physics. The IPKat is starting to wonder whether, in the light of a recent spate of applications to patent inventions that run contrary to the laws of physics, we're about to see a rewrite of the laws of physics ... Stop dreaming, says Merpel.

Patenting Lives

The IPKat's friend Johanna Gibson wants to remind you about the Patenting Lives Conference, which takes place next week (programme here; registration form here). Backed by the Arts & Humanities Research Council, Patenting Lives will be held at the Clore Management Centre, Birkbeck College, London. Patenting Lives is not just a boring, crusty old conference - it's a multidisciplinary celebration of the various dimensions to the patenting of life and it's not even that dear (£150 for the full two days; reductions for one-day-only participants and students; special rates for anyone accompanied by his/her clone ...)

The project also has its own blog now - so do remember to visit it.


The IPKat has come across a rather unlikely rebranding suggestion through MosNews.

Vladimir Zhirinovsky, the leader of Russia’s nationalist LDRP party has suggested that IKEA rename itself LDRP. Zhirinovsky argued that the party’s mark is similar since both consist of four letters and feature the colours blue and yellow. He points out that LDRP has used its mark since, 1989 while IKEA’s mark has only been used in Russia since 2000.

Zhirinovsky reckons that a change of name will lead to more sales for IKEA. He also suggests that the homeware store begin selling Zhirinovsky perfume, Zhirinovsky vodka, caps and t-shirts with LDPR’s logo. Customers would also receive an LDPR booklet and a record of Zhirinovsky’s songs for free.

The article does not record IKEA’s response to this suggestion.

The IPKat could understand if Zhirinovsky was trying to stop IKEA from using its mark in Russia, but encouraging a defender to change its similar mark to an identical mark is rather unusual.

Thursday, 24 November 2005


ECJ cornucopia

Not even the industrious IPKat can hope to deal with so many tip-top IP decisions from Luxembourg all in one go, so he has put together a little list. Today's freshly posted cases on Curia include

* Case C-421/04 Matratzen Concord AG v Hukla Germany SA. This is an Advocate General's Opinion on a reference from Barcelona on what is essentially a question of how one interprets Article 3(1)(c) of Directive 89/104: "under what conditions can a trade mark be registered in a Member State where, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned?" TM enthusiasts will remember the CFI's earlier ruling in 2002, on a dispute over a Community trade mark application, that MATRATZEN (which means "mattress" in Germany") was validly registered as a trade mark in Spain. Here Advocate General recommends that ECJ rule that

"Article 3(1)(c) of Council Directive 89/104 must be interpreted as meaning that a sign consisting solely of a word or words which denote the product which it covers or describe the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the product in the language of one Member State may not be registered as a trade mark in another Member State where a significant proportion of traders in and consumers of that product can reasonably be expected to understand the meaning of the word or words".
The IPKat keenly awaits the ECJ's ruling (late Spring 2006, he guesses), in the confident knowledge that whatever ruling results will infuriate either the Spaniards or the Germans (who now comprise a sizeable proportion the Spanish population).

* Case T-135/04 GfK AG v OHIM, BUS-Betreuungs- und Unternehmensberatungs GmbH. GfK applied to register as a CTM the word mark ONLINE BUS for statistical and consultancy services in Class 35. BUG opposed, citing an earlier registration of a mark that looked like this (left) but which was only used like this (right). The Opposition Division and the Board of Appeal both upheld the opposition, finding a likelihood of similarity: they also held that the differences between BUG's mark as registered and as used had not undermined the distinctive character of the mark as registered. The CFI agreed.

Right: now this is what the IPKat calls a real ONLINE BUS

Merpel says, it's strange to find a case where the tribunal has to expend as much energy comparing the opponent's mark as registered with the mark as used as it spends in comparing the opposing parties' signs.

* Case T-346/04 Sadas SA v OHIM, LTJ Diffusion marks a return to the limelight of one of Europe's most popular disputes: the battle between the owners of the ARTHUR and ARTHUR ET FELICIE marks. This time, Sadas applied to register ARTHUR ET FELICIE as a word mark for goods in Classes 16, 24 and 25. Sadas opposed, citing earlier registrations in Classes 24 and 25 of its figurative ARTHUR mark (left) and claiming that there was a likelihood of confusion.

Although in previous litigation before the ECJ Sadas argued successfully that ARTHUR ET FELICIE was not identical to ARTHUR, this time round it could not persuade the CFI that the respective marks were insufficiently similar to remove the likelihood of confusion between them.

The IPKat is sure that there must be some really exciting story that lurks behind this dispute - a family vendetta, perhaps - and keeps fuelling it when common sense and financial prudence would have stopped either side getting embroiled long, long ago. Does anyone know the real story?

* Case T-3/04 Simonds Farsons Cisk plc v OHIM, Spa Monopole intervening. The applicant was really asking for trouble here, picking a litigious foe like Spa Monopole and then trying to register this figurative mark (left) in the teeth of Spa's earlier registration of KINNIE for much the same goods. Well, the CFI dismissed the applicant's appeal with costs, which was always going to be the most likely result.

* Case C-431/04 Massachusetts Institute of Technology. This was a reference from the Bundesgerichtshof on the meaning of the words “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) of Regulation 1768/92 on supplementary protection certificates. Advocate General Leger advises:
"The concept of “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) ... must be interpreted as meaning that it does not preclude the grant of a supplementary protection certificate to a combination of two substances, one of which is a known substance with pharmacological properties of its own for a specific therapeutic indication and the other is necessary for the therapeutic efficacy of the first substance, for this indication".
The IPKat would not dare to pass comment on this without reading it carefully first, so he invites his readers to offer their thoughts in the meantime.


Are you game for a little theory?

Why do some businesses have a sue-on-sight policy for infringers, while others are more laid back? Why can it make good sense to 'infringe' your own IP rights? What is an n-person iterated non-zero-sum game? If you ever wanted the answer to any of these questions, come and support IPKat's co-blogmeister Jeremy when he speaks this evening on 'How to Win at Monopoly: Applying Game Theory to the Enforcement of Intellectual Property Rights'.

The lecture, in the Current Legal Problems series, takes place at 6pm today in UCL's Bentham House, conveniently near Euston Station. Mr Justice Lightman is in the chair.

X Factor dispute

The BBC reports on the action brought by Simon Fuller against The X Factor which, he claims, infringes the format of his Pop Idols programme. Fuller claims that the ITV1 show copies his Pop Idol format. Fuller's company 19 TV, which created Pop Idol and American Idol, is taking action against FremantleMedia, Cowell and his firms Simco and Syco. Cowell, who became a household name as a Pop Idol judge in 2001, called the claim "utterly ridiculous".

The trial continues. The IPKat will bring you the result. He expects, though that the court will stick to the party line that there is no copyright in a TV programme format.

Wednesday, 23 November 2005


The IPKat has discovered from ZDNet that teenage dotcom millionaire Benjamin Cohen has given up his fight against Nominet, who ordered him to transfer the to iTunes. Cohen failed to convince Nominet that he had innocently registered the domain name and, instead of using Nominet's in-house appeal system, Cohen applied to have Nominet's decision judicially reviewed.

The judicial review action was dismissed in July since Cohen delayed before bringing the action. Now Nominet has said that Cohen's company has formally abandonned all attempts to regain the domain name.

Nominet's company solicitor said:

"We always said you can't go running off to court before exhausting the process you are complaining about...And a judicial review is wrong for this anyway — that is for complaining about government decisions — and we're not a government body."
The IPKat doesn't think that this was how the case was decided. He thinks that the judge said that, in principle, Nominet could be judicially reviewed as, if it didn't exist, the Government would have to set up a similar entity. However, the IPKat hasn't seen a copy of the decision. If anyone can furnish him with one, he'd be most grateful.


A little bit of Nicky Noky ...

The Court of First Instance (CFI) has posted its decision in Case T-396/04 Soffass SpA v OHIM, Sodipan, SCA intervening, on the Curia website this morning. Soffass applied to register as a Community trade mark the varely figurative word NICKY for ‘articles made of paper and/or cellulose for household and cleaning purposes, such as handkerchiefs, face cloths, hand towels, napkins, kitchen towels on rolls or spools, toilet paper’ in Class 16. Sodipan opposed, citing its earlier French registration of its NOKY figurative marks for various products in Class 16, including toilet paper. Deeming the marks to be quite different, the Opposition Division did not consider the degree of identity or similarity of the goods or proof of use of the earlier marks. The Board of Appeal, finding that there was some similarity between the marks, ordered that the case be remitted to the Opposition Division for further consideration. Soffass appealed.

The CFI dismissed the appeal, holding that even if there is a very slight degree of similarity between the marks it is necessary to make a global appreciation of the likelihood of confusion. As to the similarity of the marks in this dispute, the CFI said:

"34 As regards the visual aspect, it must be held that there is a certain similarity between the marks at issue. Three of the four letters of the mark NOKY are found in the same place in NICKY. The marks have the first letter ‘n’ and the ending ‘ky’ in common. Since that ending is not usual in the French language it may be regarded as the dominant element in the two marks which draws the attention of French consumers.

35 As regards the phonetic aspect, there is a further similarity between the marks concerned as the last syllable ‘ky’, which is identical in the two marks at issue, draws the attention of French consumers. Therefore, the first syllables of those signs, which differ from each other, have less impact phonetically.

36 In that regard, it must be recalled that according to the case-law, the degree of aural similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods ...

37 Likewise, conceptually, it is possible ... that the word ‘Nicky’ may be perceived by French consumers as a diminutive of the first names Nicolas or Nicole. The importance of that argument is, in part, influenced by the nature of the goods concerned and the circumstances in which they are marketed. Accordingly, the assessment of that argument cannot be separated from the other factors which may be relevant".
The IPKat makes no comment as to the slight degree of similarity - which appears to relate to the marks as words rather than as figurative marks - but he does take exception to para.27 of the CFI's ruling, which reads:
"27 ... if the signs are completely different it is possible in principle, without examining the goods in question, to take the view that there is no likelihood of confusion".
What does "possible in principle" mean? The Community Trade Mark Regulation makes no provision for opposing an application by reference to a mark which is completely different, does it? and if the marks are completely different, why waste expensive time and valuable effort in making unnecessary comparisons?

Alrex/Artex again

Last week the IPKat posted a blog on Case T-154/03 Biofarma v OHIM, Bausch & Lomb intervening. He has now received this comment from a well-informed if anonymous source:
"I think you missed the point of the Alrex/Artex case. It should be remembered that both products are only sold under prescription. Therefore it would seem that the relevant public is a specialised public, trained to distinguish pharmaceutical trade marks, as pointed out by the Board. However, to the contrary of what you said, the CFI referred not only to the specialists, but also, in paragraph 45, to the general public - since end-users would take the products at home. Therefore likelihood of confusion had, according to the CFI, to be measured in view of the possible consumer, although that person has no influence on the choice between different products (function of origin).

But why should the end consumer be relevant, if public health reasons are not part of the relevant considerations and if he does not take the decision which product to buy? Or to turn the question around: pharmaceutical trade marks correspond to a world of its own. They are so difficult for the general public to remember. Most of them will be easily confused by the end consumer. So, in the future, hardly any new trade mark application will pass the test of likelihood of confusion?"
The IPKat agrees that the position of the end-consumer would be difficult to square with the relevant considerations of trade mark law if he had no input on the purchasing decision of the pharmacist or physician. However, end-users do influence purchasing decisions: they ask for products because their friends or relations have previously taken them successfully, or they ask not to have them prescribed because they do not like them and react adversely to them.


According to a press release from the World Intellectual Property Organization (WIPO) yesterday:

Member states of the World Intellectual Property Organization (WIPO) examined ... the impact of the copyright system on the use of protected works for educational purposes in both the analog and digital environments, particularly in developing countries. The meeting took place at the beginning of deliberations by the Standing Committee on Copyright and Related Rights (SCCR) which is being held in Geneva from November 21 to 23, 2005.

Copyright law, like other forms of intellectual property law, recognizes that restrictions or limitations in the rights granted to authors and holders of other related rights are justified in certain cases that do not conflict with the normal exploitation of the protected material and do not unreasonably prejudice the legitimate interests of the rightholders. In relation to education, certain permitted uses are defined which remove liability that would otherwise arise. Digital technology has revolutionized the way in which creative works, including educational materials, are made, delivered and used with important implications for copyright. The information meeting provided an opportunity to examine the varying perspectives of the different stakeholders and served as a forum for delegates to discuss and exchange experiences on the opportunities and challenges presented by the copyright system within the context of education, especially within developing countries.

"The digital environment presents enormous opportunities and challenges in terms of delivering educational materials in a sustainable manner, said Mrs. Rita Hayes, WIPO Deputy Director General in charge of copyright issues. "Today’s meeting was an excellent opportunity to look at the dissemination of teaching materials through balanced and effective copyright systems that meet the needs of all stakeholders; authors, publishers, libraries and educational services", she added.

This is so sweet, the IPKat thinks. If WIPO wants to make more information available for educational purposes in a digital environment, he hopes it will give Google a phone call and encourage its activities in making as many works as possible available to its users through the Google Library Project.

Copyright World

The cover story of the November 2005 issue of Copyright World is an account by Nigel Stoate and Camilla Smith of Taylor Wessing of the spare parts market for cars in the light of proposals for a harmonised European approach to the subject (elderly readers will remember what a live this issue this was in the 1980s and 1990s, when the UK still had a motor industry ...). Other features include articles by
* John Halton (Cripps Harries Hall) on the legal and policy issues arising from the use of technology protection measures;

* Alexandra van Beelen (DLA SchutGrosheide) on Dutch, Austrian and German decisions relating to the disclosure by Internet Service Providers of information concerning the identity of their subscribers and

* Stephen King (Payne Hicks Beach) considers the decision of Mr Jutice Lindsay to appoint himself as a special examiner in order to visit Cuba to take evidence in the somewhat protracted "Buena Vista Social Club" copyright dispute.

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