From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 18 January 2017

Around the IP Blogs!

This kitten is delighted to bring you the highlights of some IP blogs!

Carefully selecting some IP blogs!
Marie-Andree Weiss of The 1709 Blog discusses the Paramount Pictures Corp. v. Axanar Productions, Inc. case (2:15-cv-09938-RGK-E), brought before the Central District of California, which involved the unauthorized production of a 21-minutes film entitled Prelude to Axanar and planning the production of a full-length movie (Axanar), both crowdfunded by Star Trek fans. 

Hirotaka Nonaka of TrustinIP considers the first criminal case in Japan involving book scanning services. The High Court found that such services, comprising the cut and scanning of books per client’s request, amount to copyright infringement.

Moving to designs, Paul Tjiam and Hidde Koenraad recaps on MARQUES Class99 the decision issued by the District Court of the Hague in the consolidated cases Samsung Electronics Co Ltd v Maxperian NL BV and Samsung Electronics Co Ltd v Digital Revolution BV [ECLI:NL:RBDHA:2016:14383, para 4.74], which held that toner cartridges can be protected under Community Design rights because they are not component parts of a complex product.

Moving to trademarks, MARQUES Class 46 announces the publication by Sweet & Maxwell of the first European Trade Mark Reports (ETMR) of 2017. The January 2017 issue includes reports of recent decisions from IP offices, national and EU courts. 

Staying with trademarks but moving to Latin America, José Luis Alvarez details on IP tango the opposition system in Mexico, which in the opinion of this kitten merely provides certain regulations (by establishing a deadline and fee) regarding the Mexican practice that was known as “third party observations” (see IPKat post related here). 

Moving to patents, Patricia Covarrubia reports on IP tango about Resolution No. 175/2016, issued by the National Institute of Industrial Property (INPI) of Brazil, which makes permanent the “Green Patent” program, giving priority to the examination of inventions related to eco-friendly technologies. Also, IP tango covers the meeting of the PROSUR Directorship Committee, which addressed the Patent Prosecution Highway (PPH) program as well as the plans for 2017 and the extension of funding by the Inter-American Development Bank. 

Over at PATENTLYO, Dennis Crouch blogs about the non-precedential decision In re Chudik, issued by the United States Court of Appeals for the Federal Circuit, which involved whether a functional limitation contained in a claim can be found in the prior art. 

Staying with patents, as IPKat member Neil Wilkof discusses on IP Finance the challenges faced by the world’s largest generic drug company, Teva Pharmaceutical Industries Ltd (based in Israel), but whose most successful product in recent years has been the proprietary drug COPAXONE. 

Finally, Stéphanie Faber recaps on GLOBAL IP & PRIVACY LAW BLOG the changes to the Consumer Protection and Tourism Codes, introduced by the French Digital Republic Bill, regarding how the information must be provided by online platforms, social networks, forums and chatrooms.

Never Too Late: If you missed the IPKat last week!

New Year New Cat 
Too busy working on those new year’s resolutions to keep up with IPKat this week? No problem – here is the 130th edition of Never Too Late.

InternKat Tian reviewed Dr. Qiao Yongzhong's book “Maintenance time and the industry development of patents -- empirical research with evidence from China

Full low down on the interim decision handed down by Mr Justice Carr on 29 December in the biosimilars battle of Fujifilm Kyowa Kirin Biologics Co., Ltd and Others v AbbVie Biotechnology Limited [2016] EWHC 3383 (Ch).
The European IP Institutes Network (EIPIN) is recruiting 15 PhD candidates wishing to conduct doctoral research on the role of IP in the adaptive complexities of innovation.

Neil looked at an example of co-branding employed by a senior citizen facility

And the weekly round ups Sunday Surprises and Around the IP Blogs


Never Too Late 129 [week ending on Sunday 1 Janurary] A Kat's 2016 Copyright Awards I Happy Public Domain Day! I The champagne of trade mark disputes I Jaguar Land Rover DEFEND[ER]s its trade mark I Länsförsäkringar, Länsförsäkringar, bork, bork, bork! I Passing off the National Guild of Removers and Storers I Fuss over function: In case you missed the annual IP-World Christmas party I The Supreme People's Court of China's Michael Jordan Trademark Decision I Intermediary IP injunctions: what are the EU implications of the UK experience? I Swedish Supreme Court has ruled that sport broadcasts are not protected by copyright I Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order I Never too Late I Around the IP Blogs

Never Too Late 128 [week ending on Sunday 25 December] | Sunday Surprises | A TITANIC trade mark dispute | Book Review: two new methodology books for EQE candidates: Smart in C and Tactics for D| Around the IP Blogs| Around the IP Blogs | Before there was copyright there was censorship: the tale of "The Feast in the House of Levi” by Veronese | Permission to appeal in patent cases - farewell to the Pozzoli approach | Permission to appeal in patent cases - farewell to the Pozzoli approach | EPO bows to EU Commission on patentability of products of essentially biological processes | Monday Miscellany | Groundless threats - Nvidia v Hardware Labs | 

Never Too Late 127 [week ending on Sunday 18 December] | Around the IP Blogs | Top-level Property Rights Protection Guideline released in China | CEIPI/EAO Conference--"Copyright Enforcement in the Online World" | More on the Swedish application of GS Media | Mini UPC Update: UK signs Protocol on Privileges & Immunities | When a holiday e-card meets IP: Well done, IPOS! | Unregistered designs for eXreme storage | Academic publishing houses lose appeal against Delhi University & photocopy shop | GS Media finds its first application in Germany | Monday Miscellaneous | Part 36 offers in the IP Enterprise Court

Never Too Late 126 [week ending on Sunday 11 December] | Will Iceland's EU trade mark end up on ice? I Obviousness over the CGK - dead or alive? I Will UK industry suffer from Government's "ratify now, repent at leisure" UPC stance? | Indian Trade Marks Registry to widen its doors for recording “well known” marks | Mediaplayers and streaming: AG Campos Sánchez-Bordona in Filmspeler proposes broad interpretation of notion of 'indispensable intervention' | AIPPI Rapid Response Report: Debating Lyrica's recurring pain on plausibility, abuse and infringement | PPDs and standard disclosure - can you have your cake and eat it? | BREAKING: Unanimous Supreme Court in Samsung v Apple finds that damages may be based on a component, not whole product | (Belatedly) remembering Raymond Niro, the most influential person in patent litigation whom you may have never heard of | Genuine use of three dimensional EU trade marks - heated arguments over ovens | Wild Boys Sometimes Lose It: Duran Duran fail to reclaim their US copyright |Around the IP Blogs 

Photo credit: Steve Jurvetson

Tuesday, 17 January 2017

BGH: to cease means to recall

We would like to bring the attention of our German Readers a recent decision (published 13 January 2017) of the Federal Court of Justice (Bundesgerichtshof, BGH) with far-reaching implications for practitioners. In essence, the BGH held that any prohibition to distribute a product entails an obligation to actively recall any products already on the shelves, endorsing the view expressed by the Oberlandesgericht Munich in 2013. The same dispute has already led to a  judgment of the ECJ on 23 November 2016 (not related to the enforcement of the order).

Plaintiff had obtained an injunction based on unfair competition law (UWG) against the mareting and distribution of alcoholic beverages under the signs "RESCUE DROPS" and "RESCUE NIGHT SPRAY" ("es zu unterlassen, im geschäftlichen Verkehr als Spirituosen gekennzeichnete Produkte unter der Bezeichnung „RESCUE TROPFEN“ und/oder „RESCUE NIGHT SPRAY“ zu bewerben und/oder zu vertreiben"). By its wording, the order only entails an obligation to cease and desist, and not any obligation to actively recall any products. The order became provisionally enforceable.

Defendant failed to recall any products already sold to retailers (primarily pharmacies). Plaintiff argued that this violated the order - and prevailed. The BGH held that in a case where the continued presence of the products on the shelves of retailers creates a continued disturbance ("fortdauernder Störungszustand"), the obligation to cease and desist includes the obligation to remove the continued disturbance, although generally, an obligation to cease (Unterlassungspflicht) must be distinguished from an obligation to remove (Beseitigungspflicht). It was further irrelevant that the buyers of the products were not obliged to comply with any request for a recall of the products (since they have become the legal owners of the products). The key reasoning is in paras. 24-27 of the decision for those who read German.

While the injunction in this case was based on unfair competition law, it is hard to see that the outcome would have been any different for a prohibition based on trade mark, copyright or patent law. In essence, any obligation to cease distribution of a product in Germany in the future also entails the obligation to recall products already distributed (and not yet used up). Failure to do so makes the Defendant liable to pay the administrative fine imposed by the order in case of non-compliance - in the case at hand, EUR 15,000 for the omission of recalling the products.

Monday, 16 January 2017

Social media, "WikiLeaks" and false news in the 18th century: Thomas Jefferson and the "Mazzei letter"

In today’s public discourse, nothing is more super-charged than social media, "WikiLeaks" and false news. We like to think about these issues as something new. However, if we discount the internet and digital context and look through a much longer historical lens, we see that the issue is really about platform, dating back to the advent of the printing press and the mass distribution of printed contents. In the Biblical words of Kohelet/Ecclesiastes, "there is nothing new under the sun". And at the end of the 18th century, this sun blazed no brighter than on the “Mazzei letter” affair, involving the later-to-be vice-president and thereafter president, Thomas Jefferson. At issue were two of the primary means of communication at the end of the 18th century, the letter and the newspaper, one a private matter and the other inherently public. The "Mazzei letter" affair shows what can happen when this separation between the private and public was breached.

The political dynamics of the nascent American republic in the early 1790’s (remember the U.S. Constitution had been ratified only in 1788) witnessed an ever-increasing split between Jefferson and the ruling Federalist party led by President George Washington and Alexander Hamilton, especially over relations with France and England. Jefferson was an ardent supporter of France, having been energized by the French Revolution. In 1794, John Jay was sent by President Washington to England to negotiate a treaty (the Jay Treaty), which put an end to the dispute between those two countries.

The treaty enraged Jefferson, to the extent that when, on April 24, 1796, he wrote a private letter to a former neighbor in the United States, Philip Mazzei, now living in Pisa, Jefferson could not resist adding several sentences about the political situation. He described the Washington presidency (and by extension, the Federalist party) as “[a]n Anglican, monarchial and aristocratical party”. The distinguished American historian, Gordon Wood, summarizes the gist of Jefferson’s dissatisfaction with Washington as follows (“Empire of Liberty”, p. 235) —
“[Washington] was trying to subvert the American’s love of liberty and republicanism and turn the American government into something resembling the rotten British monarchy.”
Jefferson’s own words were much more graphic—
“It would give you a fever were I to name to you the apostates who have gone over to these heresies, men who were Samsons in the field and Solomons in the council, but who have had their heads shorn by the harlot England.”
So far, what we find is an instance where a person lets his political hair down in writing to a friend (and we should keep in mind the rich tradition of epistolary communication at that time). That should have been the end of it. But it was not. What happened was a series of translations, publications and reproductions of the “political” portions of the letter, spanning countries and exploiting the social media of that era, accompanied by claims of distortion and worse of the original text. According to Wood, Mazzei translated these portions of the letter into Italian for publication in a newspaper in Florence (but see below). From there, it found its way to a French version that was published in France. The French version was later translated into English for publication in the American press, shortly after Jefferson had begun to serve as the vice-president under the Federalist president, John Adams.

But it is not so certain that there ever was a published translation into Italian. The Editorial Note to the Papers of Thomas Jefferson concludes that “[t]he Editors, however, have found no trace of an Italian publication …”, although Jefferson himself apparently believed so. At most, Mazzei may have translated the contents in Italian for an acquaintance in the diplomatic corps. The Editors suggest that Mazzei most likely copied the relevant contents in their original English and shared it with two friends, one of whom upbraided Mazzei for circulating the text without permission. Mazzei’s motivations for making the copies and dispatching them are not clear. Also not clear is exactly who translated the contents into French (perhaps from the original English, perhaps from an Italian translation) and who forwarded it to the French newspaper, Le Moniteur Universel.

What then happened in the United States is particularly noteworthy, involving, as it did, translations into English from a translation into French from either an Italian translation or from the original English text. As the Editors write--
"Three and a half months after the extract's appearance in France, the Federalist editor of the New York Minerva, Noah Webster, obtained a copy of the French newspaper from Epaphras Jones, a New York City merchant and ship owner who had recently returned from France. Webster arranged to have the extract and the Moniteur's subjoined paragraphs translated into English and printed in the 2 May issue of his newspaper. Subsequent mentions of it appeared in the Minerva on 3, 4, 6, 8, and 19 May. When Jones requested the return of his French newspaper, Webster made a copy for himself and had it certified by James Kent on 22 May. Webster also noted that Timothy Pickering, then secretary of state, “sent to me for the original paper, and had the letter in the original with a translation, if I mistake not, published in the Gazette of the United States”. After its publication there on 4 May, Pickering had his own copy prepared and certified by his chief clerk for his files (on 3 June). Pickering returned the newspaper to Webster. The extract in the Moniteur, of unclear lineage, had by then become the official version of Jefferson's letter, from which all American subsequent versions derived" [footnotes and citations omitted].
American newspapers. pro and anti- Federalist, pro and anti-Republican, themselves published the contents in English (not based on the original English text, but from an English translation from a French, and perhaps even before then, an Italian version.) Sometimes this derived English text was accompanied by commentary, itself not infrequently expressed in the most scurrilous terms. As Wood describes, Federalist opponents of Jefferson read out the these portions on the floor of the Congressional House of Representatives, and one congressman then proclaimed: “Nothing but treason and insurrection would be the consequence of such opinions.” Claims were made about the accuracy of the English text and Jefferson defenders even challenged the attribution to Jefferson as the author of the text (which apparently he never denied). The controversy over the letter hounded Jefferson throughout the rest of his life (he died in 1826).

With one ear attuned to the public discourse of our own moment, what do we make of the "Mazzei letter" affair? Once the letter left Jefferson's hands (presumably he did not make a copy), it was left to the whims of the social media of the day. The role of the newspapers was crucial. As Wood observes, all parties involved sought—
"… a way of dealing with the immense power over public opinion that newspapers were developing in the 1790's. In fact, the American press had become the most important instrument of democracy in the modern world, and because the Federalists were fearful of too much democracy, they believed the press had to be restrained" (p. 250) [but the Federalists lost political power forever by 1800].
Then, as now, IP seems to have played a minor role, if any. At least in the 1790's, one could point to the fact that the copyright laws were in their infancy (translations were in any event not yet protectable) as well as to the absence of protection for privacy and confidences. The dispute over the unauthorized publication of the private etchings of Prince Albert and the recognition of a right in confidences was still over 50 years away (Prince Albert v. Strange).

Still the last word, as the first, belongs to Kohelet/Ecclesiastes—"there is nothing new under the sun".

By Neil Wilkof

Friday, 13 January 2017

Arrow declarations can be granted: Fujifilm v AbbVie

The Court of Appeal decided yesterday that the High Court can, as a point of principle, properly grant declarations that a product lacked novelty or an inventive step at a particular date, see Fujifim Kyowa Kirin Biologics Co., Ltd v AbbVie Biotechnology Limited and Others [2017] EWCA Civ 1. This issue will now be considered at trial - the first of which is due to commence on Monday 16 January 2017.  A declaration in these terms is described as an Arrow declaration, due to the form of relief sought in Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat), which settled before trial.


This decision is the latest instalment in the epic battle concerning AbbVie's blockbuster Humira product, and Fujifilm Kyowa Kirin Biologics (FKB's) attempts to clear the way for its biosimilar launch (see last week's post here).  The first appeal concerned a decision of Carr J where he refused to strike out a claim for an Arrow declaration (as previously reported on the IPKat by Annsley here).  The second appeal was from decision of Arnold J and concerned the availability of an injunction to support an Arrow declaration (see previous IPKat post here).  The background to the dispute can be found in the posts referred to above. 

The precise form of the declarations of invalidity sought by FKB are set out at paragraph 43 and 46 of the Court of Appeal judgment.  The aim of the relief sought is to protect FKB from any subsequent infringement action brought by AbbVie based on divisional applications once they proceed to grant, in respect of FKB's biosimilar product.

AbbVie's challenge to the relief sought by FKB and s74 Patents Act

AbbVie contended that Arrow was wrongly decided, and that actions for Arrow declarations are precluded by s74 of the Patents Act 1977 because they put the validity of a patent in issue.  Floyd LJ summarised AbbVie's complaint concerning the relief sought by FKB as follows:  by asserting that the dosing regimen is old or obvious, the Arrow declarations (if obtained) would be making it clear that a future patent claim to that regimen would be invalid. Accordingly, if AbbVie were to obtain the grant of claims in that form, the resulting patent would have been pre-emptively adjudged invalid. There is therefore implicit in the Arrow declaration, an inter partes declaration of invalidity of a putative patent, not yet granted, having those claims.

Section 74 of the Patents Act is entitled "Proceedings in which validity of patent may be put in issue", and section 74(1) provides a list of proceedings where the validity of a patent may be put in issue. Section 74(2) then provides that:

"The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent."

Court of Appeal decision

The Court observed that the primary purpose of section 74 is to ensure that proceedings in which the validity of a patent is put in issue will always be before a court or tribunal which has jurisdiction under the Act to revoke the patent if the grounds of invalidity are made out.  Section 74 is also concerned with putting in issue the validity of granted patents.  The Court of Appeal accepted that the Patents Act is a complete statutory code for challenging the validity of a granted patent, but noted that the Arrow declarations sought do not declare any patent invalid.  On the facts, there are now no longer any granted patents in the background in relation to which they could have that effect. The Court of Appeal concluded that there is nothing in the scheme of the EPC and the Patents Act to prevent an Arrow declaration where there is real justification for their grant. 

The Court of Appeal's summarised the legal position as follows:

i) A declaration that a product, process or use was old or obvious at a particular date does not necessarily offend against section 74 of the Act.

ii) Such a declaration may offend against the Act where it is a disguised attack on the validity of a granted patent.

iii) Such declarations do not offend against the scheme of the EPC or the Act simply because the declaration is sought against the background of pending divisional applications by the counter-party.

iv) On the other hand the existence of pending applications cannot itself be a sufficient justification for granting a declaration.
v) Whether such a declaration is justified depends on whether a sufficient case can be made for the exercise of the court's discretion in accordance with established principles.

An Arrow declaration is a discretionary remedy

The granting of an Arrow declaration is a matter of the Court's discretion.  The Court of Appeal was careful to note that "A claimant cannot seek an Arrow declaration simply because it would like to know whether a patent application in the course of prosecution will result in a valid patent. The course envisaged by the statute is that he should wait and see what, if any, patent is granted. The statutory remedy does not constitute a bar in principle to the granting of declaratory relief in appropriate cases, however. Where, for example, it appears that the statutory remedy is being frustrated by shielding subject matter from scrutiny in the national court, it should be open to the court to intervene."

The Court of Appeal was more hesitant about the justification for granting an injunction in the terms sought.  However, it was not minded to strike out the claim for an injunction at this stage, and noted that "an appropriately framed injunction may be an alternative to the declaration".

The appeals from these strike out applications were therefore dismissed.   

Tuesday, 10 January 2017

Guest Post - China's Patent Boom

The IPKat is delighted to receive this guest post from Yangjin Li (details at the end of the post)

World Intellectual Property Organization recently published its annual World Intellectual Property Indicators report. This report states that, amid rising worldwide demand for intellectual property rights, a new record was set. Namely, with around 1.1 million new patent applications in 2015, the State Intellectual Property Office of China (SIPO) became the first patent office to receive more than a million applications in a single year. This was almost as many applications as the next three offices in the ranking combined (the patent offices of the U.S., Japan and South Korea). Some people are astonished and also confused about China’s patent boom in recent years: What drives such a strong growth in patent applications? How good is the quality of the massive applications? What impacts does the boom have on patent protection in China? This article briefly discusses some aspects of these questions.

What drives China’s patent boom?

First of all, the growth of patent applications is accompanied by China’s strong economic growth. The continuing industrialization, the rise in market competitiveness and R&D investments naturally lead to more innovations. However, the single-digit growth in R&D investments (8.9% in 2015) can only partly explain the double-digit growth of patent applications (18.7% in 2015). Apparently, other driver-factors also play a role.

As widely known, a significant part of the growth can be attributed to the Chinese government’s patent-promoting policies. Direct subsidies on patent filling fees, sometimes coupled with rewards for granted patents, are regularly offered by the government. Besides, many other innovation-promoting programs, such as the certification of the prestigious High and New-Technology Enterprise (HNTE) status, which gives the enterprise a 10% deduction in corporate income tax, are also linked to the performance in patent output. These policies incentivize patent filling enormously.

Besides the direct policy incentives, it seems that a momentum has been built up among many Chinese companies that are transitioning from low cost manufacturers to creators of more advanced technologies. More and more companies are actively seeking to build up a large patent stockpile, in order, on the one hand, to establish an image of innovator, and on the other hand, to secure an optimal competitive position in patent competition.

These self-initiated attempts to accumulate patents are further fueled by low-priced patent agent services. Low-priced patent agents in China charge a flat-rate of several hundred Euros for drafting, filling and prosecuting an entire patent application. Considering that a similar service can easily cost a patent applicant several thousand Euros in the U.S., Japan or any of the major European patent jurisdictions, the cost burden on these Chinese applicants is really low and thus hardly deters them from applying more. 

How good is the quality of the massive applications?

Logically, one may have doubts about the quality of the massive applications. One can at least rest assured that all of the 1.1 million patent applications filed in 2015 will sooner or later be undergoing substantive examination. However, it raises questions about the SIPO’s examination capacity. As SIPO continues building its examination capacity to meet the rapidly growing demand, the workload and the skills of examiners, particularly those newly recruited examiners, may well influence the reliability of the examination.

Even among the granted patents, quality differences exist. According to the SIPO’s statistics, by 2015, patents granted to domestic applicants have on average 7.3 pages of specification and 7.8 claims, while patents granted to foreign applicants have on average 18.5 pages of specification and 17.4 claims. This demonstrates the overall inferiority of the indigenous patents in the thoroughness of patent drafting, the extent of technical disclosure and probably also the value of the inventions.

What impacts does the boom have on patent protection in China?

A direct consequence affecting many businesses operating in the Chinese market is that the risk of patent infringement keeps increasing and may become hard to manage. A lot of resources must be spent on conducting freedom-to-operate analysis, monitoring patent activities in fields of interest, invalidating wrongly granted patents and responding to potential infringement lawsuits. This presents a difficult situation especially for foreign businesses due to the language barriers.

Also, low-quality patents can be strategically used as bargaining chips to ward off infringement lawsuits. That’s to say, a patent infringer, who itself has a large low-quality patent portfolio, can try to use its low-quality patents as threat of retaliation to defer the holder of the actually infringed patent from starting an infringement suit. As a consequence, the value of high-quality patents deteriorates.

On the positive side, China’s recent patent boom makes a great contribution to raising public awareness about patent protection and fostering the development of a large group of patent professionals, from examiners and agents to lawyers and judges. Moreover, the published patent applications become a huge reservoir of prior art documents, which facilitates future patent examination. Given that China's first modern patent law was instituted just three decades ago, the recent patent boom surely helps lay a solid foundation for continued positive development in the future.

About the author: Yangjin Li works as a patent engineer at an IP law firm based in Munich. He is a co-founder of the legal blog  

Monday, 9 January 2017

Watch out lawyers - do you own your name?

That which we call a rose
Do lawyers own goodwill in their name? The UK's IP Enterprise Court tells all in Bhayani & Anor v Taylor Bracewell LLP [2016] EWHC 3360.

This was a summary judgment decision which focused on the question of whether a partner or the firm owns the goodwill she develops in the course of her professional duties and whether she can stop the firm from continuing to use her name when she leaves the partnership.

The dispute arose when a partner, Ms Bhayani, left Taylor Bracewell but the firm continued to use a sub-brand she had developed and for which the firm had registered a trade mark: Bhayani Bracewell.  Ms Bhayani alleged passing off and revocation of the trade mark on the basis that use of the trade mark was liable to mislead the public that she was still a partner at the firm (under section 46(1)(d) of the Trade Marks Act 1994).  The partnership agreement was also considered in light of both issues.

Season's Greetings and Goodwill to all mankind 

Goodwill, the first limb of the passing off "trinity" was the primary focus of the hearing.

It was accepted that Ms Bhayani had acquired a reputation in the field of employment law.  However, reputation is not the same as goodwill and on its own is not sufficient to found an action for passing off.   So, whilst an individual partner may have a professional reputation, it does not follow that they own the goodwill in their name.  As HHJ Hacon noted "goodwill cannot in law subsist as a thing alone - it is indivisible from the business with which it is associated."  Therefore, in the normal course of things the goodwill generated by a partner's acts will vest in the partnership.

The judgment did go on to consider some circumstances in which an employee (or partner) could generate goodwill of their own.  For example:

Landa v Greenberg [1908] 24 TLR 44 - a contributor to a weekly column in The Jewish Chronicle under the name "Aunt Naomi" was granted a declaration that she was entitled to the Aunt Naomi name and an injunction to prevent the new proprietor from continuing to use the name.  

Dr Crock & his Crackpots
Hines v Winnick [1947] Ch 708 - "Dr Crock" from Dr Crock & his Crackpots (an orchestra on a BBC radio show called Ignorance is Bliss) sued when the defendant tried to replace Dr Crock with a new performer.  The judge was referred to Landa v Greenberg and granted an injunction against continued use of the Dr Crock name on the same basis.

Forbes v Kemsley Newspapers Ltd (1951) 68 RPC 183 - "Mary Delane" wrote various articles in the Sunday Times under a pen name which was chosen by the defendant.  Her contract was terminated but the defendant continued to publish under the Mary Delane name  The judge noted that "a person who writes under a pseudonym is entitled to the property in that name as part of his or her stock-in-trade unless there is a term, express or implied, to the contrary in an agreement with an employer".  There was no such term so the claimant was granted her injunction.

Irvine v Talksport [2002] EWHC 367 - TalkSport created a brochure which used an image of Eddie Irvine with a TalkSport branded portable radio superimposed on the image.  Irvine brought a successful action for passing off on the basis that the brochure falsely represented that Irvine endorsed the TalkSport radio station.

These cases were distinguished on the basis that they either related to (i) writers/performers  so the court assumed that the public would consider the artist to be solely responsible for their creative output or, (ii) in the case of Irvine, to a separate business to his contract with Ferrari as a racing driver.  In other words, Irvine endorsed products as part of a separate business and consequently had generated a distinct goodwill which was his and on which he could found an action for passing off.

Because Ms Bhayani's reptuation had all been carried out at law firms (rather than sole proprietorships), there was no separate business which could be characterised as belonging to Ms Bhayani.  This meant that the goodwill in her name vested in Taylor Bracewell and her previous firm.  No goodwill meant that the passing off action could not possibly succeed.

Careful contract reading can avoid later drama
A further observation

Under this intriguing heading, HHJ Hacon went on to suggest that if a firm continued to represent a solicitor as being employed by them after their departure from the firm it would be possible to take action against them either on the basis that (i) the goodwill associated with the name of the solicitor vests in their new firm and/or (ii) there has been an injurious falsehood.

Partnership agreement

The partnership agreement further strengthened Taylor Bracewell's case although it did explicitly note that Ms Bhayani was free to use her own name in the course of trade now that her employment at the firm had ceased.  This agreement, arguably, also gave Taylor Bracewell a contractual right to continue using the Bhayani Bracewell mark.

Revocation of a trade mark which is liable to mislead the public

Section 46(1)(d) of the Trade Marks Act 1994 provides that:
(1) The registration of a trade mark may be revoked on any of the following grounds— ... (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Ms Bhayani claimed that Taylor Bracewell's use of Bhayani Bracewell was liable to mislead the public that she was still associated with the firm.  The judge agreed that this argument had a realistic prospect of success and thus declined to strike out the claim.

Sunday, 8 January 2017

Around the IP Blogs

In December of 2016, the U.S. Copyright Office released a Report on Software Enabled Consumer Products. Notably, the U.S. Copyright Office believes that, at least in the context of copyright law, that there is not a need for new legislation -- current flexibilities in the law can accommodate technological change. 

Mike Mireles reports the recently released Highlights report by Association of University Technology Managers (AUTM) concerning its FY2015 annual survey, and explains why the results of the survey are promising. 

CopyKat, PasteKat...

JIPLP’s Editorial board member Danny Friedmann (IP Dragon and Simone Intellectual Property Services Hong Kong) shared some interesting comments on Hong Kong's new patent system, following the changes introduced by the Patent (Amendment) Bill 2015.

Tibbie McIntyre brings the first CopyKat of the year -- Disney’s Lightning McQueen wins in Chinese Copyright case, Cars vs. Autobots. 

The Delhi High Court has restrained 3 domestic collection societies from granting any such license till April 24th 2017 -- turns out that only registered societies can grant licenses in respect of copyrighted work(s). 
The fashion law blog brings an exclusive report of the case: BURBERRY LIMITED (UK) ET AL V. MOISEE, 1:16CV05943 -- After filing a strongly-worded trademark infringement suit against rapper Burberry Perry this summer in the U.S., Burberry has been handed the final victory in this “irreparable harm” case. 

Lessons from Chanel and Coty’s "Smell-Alike" Victory
A Netherlands court has held that use of perfume comparisons constitutes trademark infringement when it crosses the boundaries of comparative advertising. The flourishing trade in “smell-alikes” is a thorn in the side of the makers of well-known perfumes, including Chanel and Calvin Klein. However, thanks to a recent judgement from the District Court of The Hague, these parties’ ability to fight such practices has been strengthened.

Photo courtesy of Ms. Nyske Blokhuis.

Sunday Surprises

The International Trademark Association (INTA) Europe Representative Office in Brussels is looking for an intern to carry on membership and communications activities. Enrolled students with interest in communications, marketing, IP, EU media and institutional environment are encouraged to apply before 27 January 2017 by sending CV and covering letter to Milesh Gordhandas ( More information, here.

Sticking to the New Year’s resolution!
The European Policy for Intellectual Property association (EPIP) is calling for papers for the 12th Annual Conference entitled “Claims on Area: The Geography-IP Interface”, which will take place on 4-6 September 2017 in Bordeaux, France. Keynote speakers are: Bronwyn H. Hall (UC Berkeley), Stefan Bechtold (ETH Zurich), Graham Dutfield (University of Leeds) and Walter W. Powell (Stanford University). The Conference will focus on the globalisation of inventive activities, the geographical evolution of cyber-space as well as geographical indications and traditional knowledge. However, papers on all IP-related topics are welcome! Scholars from all disciplines and practitioners interested in the economic, legal, political and managerial aspects of IPRs are encouraged to submit a full paper or an extended abstract for per review before 24 March 2017. More information, here.

On 23 December 2016, the Intellectual Property Office of Singapore (IPOS) announced, as receiving Office under the Patent Cooperation Treaty (PCT), the acceptance of International applications in Chinese from 1 January 2017. The option enables the deferment of translation costs from Chinese into English until the national phase entry stage for those applications already filed or to be filed in Chinese. More details, here.

Free webinar on “What Economic Role for Patents in the ‘Internet of Things’ Space?”. Joyce Deuley, Kurt Kelley and Dr. Alex G. Lee will discuss the economic role of Patents in the IoT era from the point of view of financial analysis, entrepreneurship and patent landscape analysis. The webinar is hosted by OxFirst and will take place on 19 January 2017 at 16.00 (CET). More information and registration here.

The Journal of Intellectual Property Studies (JIPS), a student-run online journal published by the National Law University-Jodhpur in India, is calling for contributions. The JIPS aims to enhance discussions on IPRs between policy makers, practitioners and scholars as well disseminating IP knowledge. More details, here.

Trademark and co-branding as a badge of … did you say "location"(?)

This Kat has begun some research on co-branding, usually understood as the use of two marks on single product, each of which mark belongs to a different owner and
identifies a separate and distinct aspect of the good or service. Growing up in the trademark world, this Kat was familiar with the presence of both a trademark and a service mark to identify both the source of the goods as well as its local distributor. While the presence of two different marks in such a situation seems at first glance a bit puzzling (two different “sources” of the same product?), he understands it in terms of the difficulty in showing evidence of use of a service mark. Against this backdrop, this Kat recently encountered a real-life example of co-branding within his own neighborhood. It shows the surprising role that a co-brand can serve in identifying a mark as a badge of valuable commercial location.

At issue is a senior citizen retirement facility. One can discern two different scenarios with respect to the use of a mark and brand in connection with carrying on such a business. The first is use on a single, stand-alone facility, with a mark and brand unique to that facility. In this situation, the strength of the brand is tied to the success (or failure) of that facility at its specific location. (See a previous post by this Kat, which speculated about the branding issues of a single-site business in the context of the use of a highly descriptive mark.) The second is a chain, in which the properties are either all owned and operated by a single entity, is run as a franchise operation, or is organized in some combination of the two. Here, the mark and brand must deal with the challenge of maintaining quality control across multiple facilities. Succeed, and the business can enjoy the fruits of scale plus the prospect of continuing expansion.

All of this is straight-forward enough in principle. But here, the retirement facility in question has been operated at the same location for decades under a mark that has become well-recognized as identifying the facility located at that site. Indeed, a broad swathe of the broader population connects the name with that specific facility. This facility was recently acquired by a real estate developer that, inter alia, owns a chain of retirement facilities throughout the country. The question then becomes—how does the acquirer brand the facility?

If we seek to analogize to the hotel business, hotels are sold from one owner/chain to another. Usually, the new owner quickly replaces the mark and brand with its own mark and brand; why remind patrons about your competitor? That may be well and good when the acquirer and acquired are both hotel chains. But what about the situation where, as here, a real estate developer acquires a single site facility? The solution adopted by the real estate developer was to keep the signage with the previous name of the facility prominently displayed at the top of the building. Not only that, but both in print, as well in radio ads broadcast over the entire country, the real estate developer continues to mention the previous name of the facility along with the new name.

At first glance, this seems a bit odd; why refer to two different names for the same business? The answer seems to be—used in tandem, these two marks enable the new owner to build its goodwill and reputation in the new mark by emphasizing, at least for a period of time, the goodwill and reputation enjoyed by the business at its long-term location under its previous name. The triad of commercial identity is: mark-business-location.

Recall that before there were trademark laws, villagers had need only to identify the source of the business by its physical location. Trademarks and trademark laws came into commercial importance only after business expanded beyond the confines of the village. In modern times, when reliance on one’s location as a badge of commercial identity is no longer practical, traders seek various ways to still exploit this valuable commercial information. The co-branding employed by this senior citizen facility is an excellent example.

As a closing curiosity, another store near-by to this Kat (this Kat’s neighborhood is a virtual cornucopia of instructive trademark curiosities), this time a boutique for home furnishings, changed its name but continued to prominently display for nearly 10 years the following notice-- “Previously known as ‘Home Store’”. Here, as well, there is branding value in continuing to inform those who pass by that “what was, will continue to be”, at this location.

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