Proof of use, continuity of functions in inter partes proceedings, and three-dimensional marks: Europe in review

Legal context: This article reviews the recent CFI and ECJ case law on proofof use and continuity of functions in the context of oppositionproceedings as well as the strict approach to three-dimensionalmarks. Key points: Unlike the situation in many common law jurisdictions, the Communitytrade mark regime is not a use-based system. Nevertheless, oncea mark has been registered for more than five years, the rightsthat it seeks to protect may only be enforceable to the extentthat the sign has been used for the goods and services it covers.In the context of opposition proceedings, applicants may callfor evidence that the opponent has actually used the mark onwhich the opposition is based. The concept of ‘genuineuse’ - which must be demonstrated in order to show thata mark has actually been used - has come before the Court ofJustice for further clarification. Where proof of use is adducedfor the first time before the Board of Appeal, the Court ofFirst Instance believes that, because of the principle of thecontinuity of functions, it is not out of time. That analysishas not been supported by the recent opinion of Advocate GeneralSharpston in the Arcol case and there is now considerable uncertaintypending a final pronouncement on the issue by the Court of Justice.In the meantime, the case law from Luxembourg continues to insiston three dimensional marks being like any other type of mark,whilst taking a very strict approach to the registrability ofsuch signs. Practical significance: The evidence of use to be adduced need not be quantatively significantand the ‘hurdle to be jumped’ is somewhat ‘lower’than was previously the case. Whether negligent representativesmay continue to use the continuity of functions principle tojustify recouping missed deadlines on appeal (particularly,when presenting proof of use), remains to be seen. However,what is certain is that three-dimensional marks will continueto be difficult to register.     

Questions on the law of evidence in plant variety infringement proceedings

Legal context. Section 940 of the German Civil Procedure Actproviding interim injunctions is applicable, inter alia, inthe enforcement of Plant Variety Rights. Key points. The nature of plants, as living organisms, meansthat the enforcement of intellectual property rights againstalleged infringers raises issues of proof and evidence thatare unique to their subject matter. Practical significance. Interim injunctions have great practicalimportance in Plant Variety infringement cases. Significantevidence problems exist due to the natural variations in plants.This article discusses the practical requirements for establishingevidence of infringement of plant variety rights in actionson the merits as well as in interim injunction proceedings.     

'Trade mark use' in Europe: revisiting Arsenal in the light of Opel and Picasso

Legal context: The European Court of Justice (ECJ) decision in the case ofArsenal Football Club v. Reed led to uncertainty regarding thepractical scope of a trade mark proprietor's property rights. Key points: The uncertainty resulted from a failure of the ECJ to addressclearly the issue of what constitutes infringing trade markuse. The ECJ ignored the question of the High Court as to whetheruse of a trade mark as an indication of origin is necessaryfor establishing infringement. They instead established an ambiguousstandard for what constitutes infringing trade mark use, suggestingthat only use that jeopardises the essential function of a trademark is an infringing use. This ambiguity has had problematicimplications for subsequent interpretations of trade mark law,particularly in the Court of Appeal in Arsenal and the Houseof Lords in R v Johnstone. Two relatively new ECJ cases may help clarify the issue. InOPEL, the ECJ suggested that infringing use of a trade markmust be use that is perceived by the relevant public as a designationof origin. The Picasso decision limits the effect of the Arsenaldecision on the relevance of confusion in non-sale situationsto the facts of Arsenal. In particular, it stresses the pointthat when assessing likelihood of confusion in the context ofan opposition to an application for registration the court shouldfocus on the perception of the relevant public at the pointof sale. Practical significance: The benefit of these two cases is that they create some clarityfor legal practitioners and the Courts when addressing the questionof what constitutes infringing trade mark use.     

The rise and fall of cross-border jurisdiction and remedies in IP disputes

Legal context. Companies which have seen their IP rights infringedacross Europe have, in recent years, been keen to obtain cross-borderrelief from infringement through bringing a single action inthe court of just one EU Member State. This approach has time,cost and tactical advantages for claimants, but raises complexjurisdictional questions. Key points. This article provides an in-depth explanation ofthe framework for litigating IP rights in the European Union.It describes the various interpretations to which the BrusselsRegulation on Jurisdiction has been subjected and how they affectthe availability of cross-border relief. This explanation providesa foundation for analysing the recent ECJ decisions in Gat vLuk and Roche v Primus. Practical significance. Cross-border jurisdiction and reliefis, in practice, no longer available in respect of registeredrights.     

Markem v Zipher--the Court of Appeal provides guidance on entitlement proceedings

Legal and practical context. The Markem v Zipher Court of Appealjudgment provides useful guidance on patent entitlement proceedingsand, more generally, on the conduct of litigation. Key points. (i) Patent entitlement. To bring an entitlementaction under sections 8, 12, and 37 a party must invoke a breachof some rule of law. Validity is only relevant in entitlementproceedings where a patent or part of it is clearly and unarguablyinvalid. A claim-by-claim approach is not appropriate in proceedingsunder sections 8, 12, and 37 and ‘invention’ inthese sections refers to information in the specification. Theproper approach to entitlement should be to identify who contributedto the invention and determine whether he has any rights tothe invention. (ii) Litigation generally. A witness should be cross-examinedas to the truthfulness of his evidence whenever a party wishesto challenge that evidence. Where a party has more than onecause of action relating to the same factual background, considerationshould be given to bringing all causes of action in the sameproceedings to avoid a future claim being struck out for abuseof process. Practical significance. This case highlights the importanceof a properly pleaded case and of the ongoing need to reviewthe case strategy throughout proceedings.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

Inter Partes Proceedings and the Reform of the Community Trade Mark Implementing Regulation

Legal and practical context. Commission Regulation 1041/2005of 29 June 2005, which amends the Community Trade Mark ImplementingRegulation, entered into force on 25 July 2005. Substantialamendments are brought to inter partes proceedings, that isoppositions and applications in revocation or in invalidity,and appeal procedures. Key points. The rules governing the substantiation of the earlierrights and time limits are now stricter. Also, the new regimeaims at circumscribing the consequences of the rather broadinterpretation which the Court of First Instance gave over thelast two years to the notion of functional continuity betweenthe opposition division and the Boards of Appeal. Practical significance. The authors analyse the new provisionscontained in the Community Trade Mark Implementing Regulationin the light of the latest case law of the Court of First Instance,in order to provide practitioners with a simplified guide.     

Is it a fair deal to tell tales on the tabloids?

Legal context. A recent High Court judgment, Fraser-WoodwardLimited v BBC and Brighter Pictures Limited, is of key interestto those that use or advise upon the use of copyright materialfor the purposes of criticism or review. Key points. This case involved the use of newspaper photographsof David and Victoria Beckham in a television documentary aboutthe relationship between celebrities and the press. The programmeillustrated its theme using screenshots of tabloid newspaperpages, which inevitably included a number of photographs. Theclaimant was the copyright holder in respect of a number ofthe photographs, and alleged that their reproduction in theTV programme was an infringement of copyright. The defendantssuccessfully relied upon the fair dealing and incidental inclusiondefences to copyright infringement. Practical significance. Although each fair dealing case willultimately turn on its own facts, Mann J gave a very usefulreview of the state of copyright law in this difficult area.     

Gaining confidence in the law of confidence

Legal context. The recent case of EPI v Symphony has left theUK law of confidentiality in an uncertain state: the extentto which recipients of confidential information may be permittedto ‘use’ mixtures of such information with publiclyavailable material remains unclear. The Court of Appeal in EPIfelt that it was hard to reconcile the principle that any claimin confidence must fail if the material in question is in thepublic domain with the ‘springboard’ doctrine; butis the distinction illusory? Key points. Issues raised in this case include considerationof what precisely is ‘use’ of confidential information,when mixed with public information, and whether a confider shoulddo more than rely on confidentiality obligations to protectthe fruits of his/her disclosures. This article asks how confidentialityobligations may be aligned with the control of statutory intellectualproperty rights. It considers whether the Court of Appeal inMarkem v Zipher has confused the issue and speculates as tohow far the general law of contract can assist the confider. Practical significance. Finally, this article discusses whichlegal tools will best assist the confider seeking to protectits intellectual property.     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Comparative advertising and celebrity photographs--fair dealing under the CDPA 1988

Legal context. Legal context. This article reviews the conceptof ‘fair dealing’ under Copyright Designs and PatentsAct 1988, section 30. It does so in the context of to recentcases concerning the fair dealing defence, IPC Media Ltd v NewsGroup Newspapers Ltd and Fraser Woodward Ltd v BBC are considered. Key points. The traditional approach of courts to ‘fairdealing’ is based upon a number of ‘factors’considered relevant in determining whether a use of a copyrightwork is fair. The article argues that there are a number ofproblems with this approach. In particular, it claims that theapproach is unsystematic and rests upon a number of questionableassumptions. It suggests that the decision of Hart J in IPCMedia Ltd demonstrates these problems to a very significantdegree. In contrast, that of Mann J in Fraser Woodward Ltd provideswelcome guidance on the application of the concept of fairnessin certain cases. Practical significance. The criticisms made in this articlehighlight a number of discrepancies in the existing case lawand suggest a need for closer consideration and greater disciplinein decision-making in this area.     

Claim construction and the extent of patent protection: A comparative analysis of the Phillips en banc Federal Circuit decision

Legal context. The United Kingdom's House of Loads in Kirin-Amgenand the United States Court of Appeals for the Federal Circuitin Phillips addressed similar issues with respect to the methodologyof claim interpretation and the fundamental rules and policiesfor determining the extent of patent protection. This articlewill review Phillips and Kirin-Amgen from the comparative lawperspective. It will compare the UK and US rules and patentpolicies with their German and Japanese counterparts, discussingthe bases for these differences and examining them from theperspective of patent policies, specifically with respect tofair protection and legal certainty. Key points. Despite the use of the same rule and methodology,legal commentators and patent professionals emphasize the differencesin the extent of patent protection in different jurisdictions.Such differences result from the availability of the doctrineof equivalents. For jurisdictions such as the UK, the US andJapan, where courts seldom apply the doctrine of equivalents,the differences result from the way in which the courts conductclaim construction. These courts use the perspective of a hypotheticalperson to support a broad or narrow claim construction, reflectingthe weight given to the competing patent policies. Practical significance. This article cites key cases for claimconstruction and the doctrine of equivalents in four major patentjurisdictions: the UK, the US, Germany and Japan. Knowledgeof the case law trends in these jurisdictions is essential fordrafting patents documents and enforcing patents.     

New pitfall for the pharmaceutical industry

Legal context This article reviews the Commission decision thatfined AstraZeneca 60 million for abuse of Article 82 EC. Itlooks at the decision in the context of the EU legal frameworkfor pharmaceuticals and considers the legal basis for the Commissiondecision. Key points The article highlights the key points of the allegedabusive practices that do not appear to be consistent with theEU regulatory legal framework and the ECJ jurisprudence in particular,read in conjunction with the principle of commercial freedom. Practical significance The Commission decision (if upheld bythe courts) would have an significant impact on the way thatpharmaceutical companies run their business. This would constitutean unprecedented interference with the principle of commercialfreedom afforded to pharmaceutical companies and specificallyrecognised by the ECJ.     

Implementing Community obligations in the realms of intellectual property

Legal context. The various Acts of Parliament governing UK intellectualproperty law have been significantly amended to give effectto Community law. This article discusses the powers used bythe Secretary of State to implement Community obligations andthe Court of Appeal's recent clarification of the scope of thosepowers. Key points. This article describes the concerns expressed bysome commentators on the scope of the powers under the EuropeanCommunities Act 1972 and the key cases on that scope, includingOakley v Animal. The article uses the implementation of performers'moral rights as an example of where going beyond strict Communityobligations is necessary. Practical significance. The article will be useful to anyoneconsidering the validity of the changes made to domestic law,including amendments to primary legislation, to implement Directivesor other Community obligations.     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

The new consumer and business protection regulations: another string to the brand owner's bow?

Legal context: This article assesses the impact of The Consumer Protectionfrom Unfair Trading Regulations 2008 (CPRs) (implementing theUnfair Commercial Practices Directive) and The Business. Protectionfrom Misleading Marketing Regulations 2008 (BPRs) (implementingthe consolidated and codified Misleading and Comparative AdvertisingDirective) on areas of marketing and advertising in which IPrights often become involved and the impact of the recent ECJdecisionon their application in the O2 v Hutchison 3G referencebythe Court of Appeal. Key points: The CPRs govern advertising and promotional activities aimedat consumers. Much of the consumer and business protection legislationpreviously scattered amongst various Acts has been repealedand replaced by elements of the BPRs or CPRs. In total, 36 Regulationsand Orders and 41 Acts are affected. The BPRs now govern misleadingmarketing and comparative advertising, previously dealt withunder the Control of Misleading Advertising Regulations 1988.The article looks at how these Regulations may be applied insituations which interested parties currently attempt to resolveusing trade mark or passing off laws. Practical significance: The new Regulations are aimed at the protection of consumersand businesses from unscrupulous marketing and trade promotionpractices which affect their economic behaviour. Thirty-onepractices are specifically identified as automatically fallingfoul of the Regulations. Businesses will need to review theirpractices to avoid the possibility of criminal penalties includingfines and imprisonment for consenting, conniving, or recklessofficers of businesses involved in such practices. Until the ECJ decision in O2 v Hutchison 3G, it had been thought(from Jacob LJ's finding in his reference to the ECJ in thiscase) that trade mark law had no role to play in comparativeadvertising as it was specifically provided for under the ComparativeAdvertising Directive and hence under the BPRs. Since thesedid not provide an individual right of action (the OFT or TradingStandards alone may enforce), it left trade mark owners withlittle muscle in comparative advertising situations. However,the ECJ made clear that where practices fail to satisfy thecriteria set out in the Directive for legitimate comparativeadvertising, trade mark law may be invoked as a remedy. Thiswill be a relief to major brand owners for whom comparativeadvertising is commonly a concern.     

Who controls the Naomi Campbell information flow? A practical analysis of the law of privacy

Legal context. The House of Lords held that the medical privacyof the glamorous supermodel Naomi Campbell was violated by publicationof details of her drug addiction treatment and a paparazzi picture.English law is developing under the influence of Article 8 (theright of privacy) and Article 10 (the right of freedom of expression)of the European Convention of Human Rights. The court explainedhow the action for breach of confidence protects privacy. So,who controls the Naomi Campbell information flow? Key points. Primarily, the courts control the flow of privateinformation. They do so through the cause of action of breachof confidence and remedies. In deciding liability, the courtsshould ask whether the benefit of publication is proportionateto the harm done by the invasion of privacy. To answer the question,they must balance the public interest in the right of privacyagainst the public interest in the right of freedom of expression.They may settle on a Reynolds type test by considering a numberof non-exhaustive factors. The article examines seven suggestedfactors and the remedies which can be deployed by the courts.Judgments from the English courts and the European Court ofHuman Rights are considered, including Campbell v MGN (HL),Douglas v Hello! (CA), McKennitt v Ash (HC), Peck v UK (ECtHR),Édition Plon v France (ECtHR), and Von Hannover v Germany(ECtHR). Practical significance. There are an increasing number of privacyclaims against the media. The article includes a checklist ofseven factors to help determine where the balance lies betweenprivacy and freedom of expression.     

Dishonestly and without due cause

Legal context: UK trade mark law was harmonised with the laws of other EU memberstates pursuant to the Trade Marks Directive (89/104/EEC) withthe coming into force of the Trade Marks Act 1994. Since then,the English courts have sought to absorb into English jurisprudencecontinental concepts of unfair competition, and a new code relatingto the use of another's trade mark in comparative advertising.Traditionally, the English approach has been more liberal andless protective of a trade mark owner's rights than that ofcontinental jurisdictions, but since 1994 the ECJ has been calledupon to provide frequent guidance on the interpretation of expressionssuch as the "essential function" of a trade mark and the "dutyto act fairly" in relation to the legitimate interests of thetrade mark proprietor. Key points: This article examines the way in which some recent decisionsof the ECJ have led to the English courts having greater regardto the property interests of the trade mark owner and less regardto the concepts of free market competition and consumer protection.In the recent High Court case of L'Oréal and others vBellure NV and others, Lewison J made findings of infringementunder s.10(1) and (3) Trade Marks Act 1994 where he found thatthere was "free riding" on the back of the reputation of certainof L'Oreal's trade marks without there being any evidence ofconfusion or association between the trade marks and the defendants'signs. Practical significance: For trade mark owners, this change in the approach of the Englishcourts opens up new opportunities to combat look-alike productsand comparative advertisements which take unfair advantage ofthe reputation of established marks.     

Significant 2005 case law on the Community trade mark from the Court of First Instance, the European Court of Justice and OHIM

Legal context. Each year the ECJ and CFI gives numerous judgmentsin trade mark matters that are of interest to trade mark practitionersthroughout Europe. This article identifies the most importantcases decided in 2005 relating to the major issues in trademark law. Key points. Issues covered relating to procedural questionsinclude the language regime, the duty of Boards of Appeal togive reasons for their decisions, the right of a party to beheard, etc. Numerous substantive issues are covered, relatingto both absolute and relative grounds. The article also containssome helpful annexes that set out some actual comparisons ofsigns and of goods & services that have been carried outby the Luxembourg courts.