Who Stole IP Rights in a Pencil Eraser? Not Faber-Castell

It has to be one of the oddest comments that I have encountered in quite a while. The setting is the September 18th issue of The Economist. In the Business section, the magazine presented the kind of article for which it is rightfully reknown. Entitled "The Future of the Pencil" the article recounts the multi-generation saga of Faber-Castell, a German company located near Nuremberg that has been making pencils since 1761. They have done so with such success that the company is described as the world's largest branded pencil manufacturer.

This is no small feat. After all, a pencil is not a pen, and the market seems to be predominently school-age youngsters (although Otto von Bismark and Vincent van Gogh are also mentioned). As such, the company has to convince parents to opt for a branded pencil, when presumably unbranded options (perhaps at a lower price) are available. From the IP perspective, this saga of success spanning four centuries should be equal parts of trademarks and know-how. Sadly, however, the trademark issue is totally ignored in the article. I don't for how long the company has used the epopymous name as the mark for its products. But I have to guess that it reaches back to the 19th century. If this is true, there is a great story here about the longevity and continuing flourishing of this venerable brand.

Instead, the article focuses entirely on the innovative activities of the company. Thus, in 1839, the great grandson of the founder came up with the hexagonal pencil, whose principal virtue is that it effectively prevented the pencil from rolling off the table. Later on, they worked on making more firmer leads and identifying the types of woods that are less likely to break when the pencil is dropped. In more modern times, the company has come up with three major innovations: First, it began use of water-based, environmentally friendly paints. Second, it developed an ergonomic triangular shape that has been well-received by children (presumably they also teach the children the meaning of the term). Third, they added so-called rubbery dots to prevent the pencils from slipping out of the sweaty hands of the children.

All of this seems jolly good, so where is the problem? I quote from the article:

"Faber-Castell's second big innovation was stolen. In 1875 America's Supreme Court ruled that Faber was entitled to put rubber erasers onto the back of its pencils, although another inventor had already patented the idea. The court felt that the idea was too obvious to patent."

What did The Economist mean by "stolen"? I mean, in today's world, the bad guys, at least under one view of things, are the patent trolls, who are accused of seeking to enforce a patent solely for the purposed of extracting "unfair" rents from unsuspecting users of the patented invention. No one would go so far as to say that patent trolls are "stealing" from the third parties who agree to pay the troll a sum to settle. Be that as it may, the pejorative context of the patent troll is exactly the opposite from the Faber situation in the 1870's. All that Faber apparently did was defend itself from an infringement claim by alleging that the patent was invalid. If that is theft, then virtually every defendant in a patent litigation action is candidate to be of a "thief", if it succeeds in invalidating the patent at issue.

I actually looked up the judgment in question, Reckendorfer v. Faber, 92 u.s. 347 (1875). Interestingly, the patentee argued that the court did not have the authority to review a decision by the Patent Commisisoner to accept an invention for patent registration. That argument was rejected, but it seems that if there was any incorporeal larceny going on, it was the attempt by the patentee to prevent the court from reinstating in the public domain an exclusive right that never should have been granted in the first place. If there was any opprobrium to be heaped on the parties in that case, it should have been on the patentee and not on Faber.

I wonder what The Economist intended by its use of the word "stolen". Did it want to intimate that even in the 19th century, corporate America (or corporate Germany) was taking advantage of the legal system to deprive private inventors of their intellectual property rights? If so, how odd. As well, one has to wonder a bit about the nature of the understanding about the patent system that is found in this most august of weekly news magazines.

It's EP divisional crunch time

tytoc collie should not need to be reminding his patent attorney readers about this, but tomorrow 1 October 2010 is the final day in many cases for filing divisional applications at the EPO (see tytoc collie's previous post here for a good starting point), as a result of the EPO Administrative Council decision CA/D 2/09.

Even though applicants and attorneys have had over a year to prepare, there will inevitably be something of a last minute rush to make sure all those divisionals that might be needed are on file by midnight tomorrow.  Will the EPO's fax machines and online system manage to cope with the load?

tytoc collie knows that many hard-working people both at the EPO and within patent attorney firms will be struggling at the moment to cope with the excessive load of applications, and would like to express his sympathy for all those adversely affected.  He would be interested to hear any stories of how things are going (or not, as the case may be).  If you have the time, please chip in using the weblog's comment facility (anonymously, if necessary).

As a final tip, according to the Notice of the President dated 12 July 2007 (Special Edition No. 3, OJ EPO 2007), applications can be filed at the EPO's offices in Munich, The Hague or Berlin, in particular at the following fax numbers:

Munich
+49 (0)89 2399-4465
The Hague
+31 (0)70 340-3016
Berlin
+49 (0)30 25901-840

Other things to do in Munich on 1 October here.

1 October 2010 Update: Thanks to a comment, tytoc collie has been pointed to this notice from the EPO, which states:

"The European Patent Office (EPO) has been informed of an email containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office's fax and online filing services will not be available from 30 September 2010 to 6 am on 4 October 2010, due to maintenance and updating of the Office's telecommunication facilities.

The European Patent Office informs all concerned that this notice is completely false and that all electronic filing facilities at the European Patent Office (online and fax) are fully available.

The Office reserves the right to take legal steps against the person(s) who disseminated this false information."

tytoc collie, who has not had sight of this email, is intrigued. Can anyone shed any further light?

A Thought for Thursday: Crowdsourcing

Late September marks the start of a new academic year, and so idle moments are currently something of a rarity for this particular Kat. However, in a ‘slightly less busy than other moments’ moment, he did stumble across an intriguing news item from the BBC that he thought he would share with his readers.

The story, entitled “Crowdsourcing: Turning customers into creative directors”, details the novel approach to the furniture business that has been adopted by Made.com, an online-only furniture retailer whose product designs are provided by the public.

The BBC explains:

"Visitors to the website are encouraged to submit their designs. The best of these are worked up into prototypes, and posted on the website. Registered members of the Made.com community vote. The most popular pieces are then available for pre-order - made in China, shipped by container and delivered directly to buyers from the port."

It continues, noting that:

"The designers are paid nothing upfront - but receive 5% royalties on successful designs".

The article also considers the crowdsourcing efforts of Threadless, a t-shirt design company that operates along the same broad lines, and Fluevog, operator of an "open source footwear website" where, you’ve guessed it, visitors upload shoe designs for the community to vote on (the BBC notes that “Winning shoes are named after their creator, who also receives a free pair”).

tytoc collie has a number of questions relating to this practice - not least: what about the rights? As far as he can see (admittedly it was a brief perusal), the only statement on the Made.com website (he’s not been sufficiently 'less busy' to have checked the others) that even vaguely acknowledges the existence of IP rights is the following:

"We are the owner or the licensee of all intellectual property rights in our website, and, save for our users content (where we are licensee), in the material published on it."

This seems unsatisfactory on a number of fronts - what happens to the business, for example, in the event that the licensor gets a better offer elsewhere? Moreover, what of the potential liabilities involved with accepting designs from the Crowd and then making (albeit abroad), importing, and selling articles made to those designs?

The BBC takes a slightly different angle in its analysis, quoting the views of Jaron Lanier, “a US computer scientist … and virtual reality pioneer”, who is reported as being concerned that: "by "mining" the crowd in this way, the wealth that results from the work done remains concentrated in the hands of the people who put out the call - ultimately endangering jobs and the economy." He also apparently believes that “crowdsourcing threatens creativity" [quite how is never really explained].

So what do our readers think? Is crowdsourcing viable?

The rise of crowdsourcing here

Crowdsurfing here

G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

At this point, tytoc collie thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which tytoc collie's readers can peruse and comment on at their leisure), the Enlarged Board concluded:

"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."

Or, in other words, in answer to the actual question raised: yes.


We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  


tytoc collie thanks Simon Roberts (BT) for the tip.

"No comments", but plenty of comment: more on "genuine use" in Europe

Not just a European debate: even "outsiders"
from the old colonies are welcome to have their say

"No news is good news", according to the proverb, but "no comment" gives less ground for celebration.  tytoc collie's post yesterday, "A kick in the gulyás? Hungary, Benelux stewed by Europe's finest" (here) attracted just one posted comment, but his email has been bubbling with ideas, suggestions and opinions from readers, some of whom are reluctant to be identified with the position they have taken in case what they say is considered legally incorrect by others with whom they work or because they don't want to alienate respected persons and firms in which prominent trade mark lawyers have taken a line which strongly opposes their own.

One correspondent who bravely agrees to be named is the highly experienced and well respected Dan Bereskin (Bereskin & Parr, Toronto), a man whose reputation [unlike that of certain trade marks which have been invoked in recent oppositions based on earlier Community trade marks, says Merpel] extends a good deal beyond the national boundaries of the country in which he practises.  Dan writes as follows:

"For me, the issue boils down to whether, after five years, a CTM that is used only in Malta [explanation for non-EU folk -- a very small EU Member State] should entitle the proprietor, even in theory, to block the use and/or registration of a similar sign elsewhere in the EU where the Maltese sign has neither been used nor made known. Any formulaic approach for determining what constitutes "genuine use in the Community" seems unlikely to be successful. My view, innocent as it is of any real understanding of EU law, is that the geographical extent of use sufficient to justify the continuation of a CTM is not really the issue. It is geographical extent to which a CTM should be enforceable after five years, and the ability of the original CTM proprietor to block registration of similar signs for use in regions where the prior CTM has neither been used nor made known.

If the CTMR were amended to allow for a concurrent CTM after five years restricted to geographical areas where the prior CTM has neither been used nor made known to a reasonable extent through advertising, publicity, etc., and if the prior CTM is not enforceable in regions where it has neither been used or made known (such that there would be no likelihood of confusion in fact), I think the question of whether use in one state is sufficient diminishes substantially in importance. Personally, I'd still like to see a requirement for use in commerce between at least two EU states after five years, but that issue seems less important to me than the issue of concurrent use/registrability".

Coincidentally, Australian-in-England solicitor and blogger Rebecca Dimaridis has posted the following suggestion on her weblog this morning:

"I am thinking along the following "compromise" position. If I was to start up a small business, and wanted a CTM, I would think the following genuine use requirements would be fair:

* within 5 years in at least 1 member state;
* within the next 5 years in at least I other member state.

So essentially requiring genuine use in a 2nd member states within the first 10 years. That way, I could get myself up & going in 1 member state within the first 5 years. But what I can't say with enough authority is just how difficult or long it would take to start up a business in another member state.Would a total of 10 years actually be enough? Would it be right to say that if I'm not ready to launch in the next member state after the first 5 years, I probably won't be ready to launch at all? Or would it be more reasonable to allow for say 8 or 10 years for the 2nd member state?"

tytoc collie suspects that we may be seeing more discussion along these lines.  It would be good to hear some comment, whether attributable or anonymised, from some brand owners themselves and not just from practitioners in private practice.

Brand Licensing: Kat on the prowl finds ... cats

Pip the Cat

Yesterday tytoc collie took a detour from his usual prowl and found himself in one of London's shabbier corners, the Grand Hall, Kensington Olympia, which housed the Brand Licensing Europe 2010 Show (if you've not yet been and are thinking of doing so, it runs till tomorrow afternoon). In a way, he was very much in his element -- the show was crammed with celebrated cats that are the subject of merchandise licensing deals, format agreements, animations and any number of other means of turning fictional felines into hard cash. Among the better-known of the species were Tony the Tiger (part of Kellogg's packet of retro-products), Postman Pat's Jess, Puss in Boots, Garfield and Hello Kitty [or should that be "Hello, money in the kitty", queries Merpel]. Other feline properties include Poppy Cat, Pip the Cat, Loretta the Cat and an entire clan of stylistically distinctive cats from the hairy paintbrush of Ann Edwards. As a Community trade mark-protected Kat which has its own licensees, tytoc collie felt he was in the company of kindred spirits. Oh, and to show his ecumenical side, the Kat also met a very sweet dog, courtesy of Darndog Licensing (alias Julia Teare).

An Ann Edwards cat

Chatting to many of the exhibitors, tytoc collie was distressed to discover that some of the first-timers -- and even a couple of more experienced hands -- had little or no idea of intellectual property law and notion of how you go about establishing and carrying out a policy for it. One very talented exhibitor told him how she had no IP rights at all, not realising that her artwork attracted automatic copyright protection. Another confidently stated that she had no worries about enforcing her IP rights against infringers: "Oh, I leave that sort of thing to my licensees", she said.

Poppy Cat takes flight

Several exhibitors who were aware of the availability of IP protection still didn't have it because it was simply too expensive -- or had laid out large sums for what they perceived to be expensive protection for which there was no need. In at least one case, this was a misfortune that could have been avoided: a company simply told its professional advisers which marks it wanted registered and then incurred considerable expense dealing with actions against similar-ish earlier marks in a variety of countries. Had the client understood the situation more clearly, it would have changed one of its own marks a little bit rather than try to blast its way through a heavily-inhabited thicket of earlier rights.

A dog from Darndog

It wasn't just prospective licensees whose wares were on show. Apart from companies offering services as middle-men, graphic enhancers, animators and the like, there were some law firms present -- and the UK's Intellectual Property Office was reassuringly there too. tytoc collie wonders whether it might be possible for the IPO to offer, either as well as or instead of a stand at the exhibition, an informal seminar for first-time exhibitors on the basics of IP protection and licensing law, in the hope that they might thereby reduce the risk of talented and well-intentioned people doing silly things. Another service provider, of which readers of this weblog and IP Finance may hear more in due course, specialised in the auditing of IP licences with a view to ascertaining whether licensors are receiving (and licensees paying!) the right sum, an issue which often leads to uncertainty when licences are negotiated and drafted by businessmen and subsequently construed by lawyers or, worse, accountants.

"Little Corkers": distinctive
style, but IP doesn't help there

A number of exhibitors, of whom Nikki Corker ("Little Corkers") was one and the impressively creative Scottish business AeroSkip ("The Skelly's at No.42"") another, were displaying work which was notable for the overall style of the artwork which constituted its unifying feature. While copyright protects individual illustrations, design protects the shape or appearance of manufactured products and trade mark law protects indicia by which the public identify their trade origin, "style" per se is not an easy subject matter to protect in terms of fixing clear legal parameters.  In some circumstances an action for passing off or unfair competition may avail a licensor whose works are emulated without being closely copied, but that's not a form of protection that can be predictably relied on, a factor that might deter some investors.

The endearing Skelly's

Eavesdropping on plenty of conversations, one of the words the Kat heard most often was "Disney". Sentences like "If you want Disney to take in interest in your product, it has to be presented their way, not yours", "That would never do for Disney", "It's got to be really good if Disney even look at it since they develop their own stuff now" and "It needs a proper story line if it's going to interest Disney" reflected the notion that Disney remains the gold standard, the measure by which the commercial value of many an incipient idea or young product is gauged.

tytoc collie and Merpel had a lovely time at the Show. The woeful absence of catfood in the refreshment areas was more than made up for by the warmth and friendliness of the exhibitors. If you can, do go, and be sure to give lots of encouragement to the small exhibitors -- they may be the megastars of tomorrow.  If you're thinking of taking a licence or striking up a business alliance, there's plenty to choose from (as you can see from the properties illustrated here); if you just love fictional cats, dogs, bears, mice, pigs -- this is your spiritual home!

Wednesday whimsies

The 1709 Blog, which is dedicated to all things copyright, is running a competition to mark the launch of CLT's "Music and Intellectual Property" conference, which will be held in Central London on 8 December. Sounds like fun, with a strong cast of speakers and a chance to hear the previously-untold saga of how the IP aspects of the Glastonbury Festival get tackled.  The competition winner gets in for nothing, with free lunch too. Click here for details.

Thought-provoking graphics
for copyright owners 1

Thought-provoking graphics
for copyright owners 1I

Copying Without Infringing.  The closing date for the "Music and Intellectual Property" competition is, coincidentally, the day of another one-day conference by CLT, "Copying Without Infringing", which too has a competition offering complimentary admission and a free lunch.  The competition must be too difficult for IPKat readers, since very few entries have been received to date. The challenge is to find a decent anagram of the statutory phrase "fair dealing for the purposes of private study". Go on, you can do it! Email your entries to Jeremy with the subject line "Anagrams". Closing date 31 October. Conference programme here.

More on the IP Tsar.  Following recent posts on this blog (click here and work back) and the latest JIPLP editorial, tytoc collie is now delighted to tell readers that there will be a free-of-charge public meeting to discuss the possible desirability and mechanics of introducing a US-style "IP Tsar", whether under that label or any other, in the UK and/or even Europe.  The date: Tuesday 23 November.  The venue: the London offices of Covington & Burling.  The time: 5.30pm to 7.30pm.  Mark your diaries and watch this space for programme details.

Inngot: a spelling pun -- "inn-"
from "innovation" and "ingot"
derived from a gold seam?

“Directory of innovation” goes national, is the slogan of Inngot, which claims to help businesses "unlock the value in their intellectual property".  Says the company, Inngot’s online service captures "not just registered IP, but also copyright, trade secrets, proprietary processes and a range of other intellectual assets. Its profiling system, known as “Goldseam”, also examines the development stage, knowledge make-up, benefits and market applications of a particular innovation, to build up a comprehensive picture of what makes it different and special".  Readers are invited to take a look and let tytoc collie know what they think.

Russian bank hits competitor with registered cabbage

Savoy cabbage before ...

tytoc collie, who unlike most felines has a soft spot for brassicas, notes with interest that the Russian Arbitration court has upheld SKB Bank’s exclusive right in the banking sector to use the image of a Savoy cabbage in its advertising, in a dispute against another Russian bank, National Bank TRUST (NBT).  The latter, with an entire range of vegetables from which to choose, foolishly or unimaginatively opted for the same one. The court also ordered the NBT to pay SKB Bank US$9,700 (EUR 7,400) in damages.  The fate of the cabbage is not currently known.

... and after delivery up for destruction

According to Russian International News Agency RIA Novosti, SKB registered its Savoy cabbage image at the Russian Federal Service for Intellectual Property, Patents and Trade Marks (Rospatent) back in 2006 for the purpose of using it in its advertising campaigns. NBT argued that no one legal entity can own the rights to a product of nature such as this widely consumed vegetable.  No, said Rospatent: banks can register common words and corresponding images as trade marks just like anyone else, as long as the words and images in question have no direct connection with the banking sector.

tytoc collie recalls the Chinese Tomato Bank and wonders if it has ever been confused with Japan's TomatoBank. This is irrelevant, crows Merpel - tomatoes are fruit, not vegetables.

Top 50 Russian banks here
Russian vegetable recipes here
Savoy cabbage recipes here and here

Thanks are due to Petosevic, for drawing the Kat's attention to this item.

A kick in the gulyás? Hungary, Benelux stewed by Europe's finest

In the stew: Hungary and Benelux --
but has there been "genuine use" of the law?

Is the use of a Community trade mark -- which covers all 27 Member States of the European Union -- to be regarded as a "genuine use" if it takes place in just one of those countries? This question has raised a good deal of controversy in recent months (see earlier IPKat posts here and here, for example). Not everyone has heard, however, that this topic was discussed last week by the European Parliament. According to a little bird that roosts in the rafters of that organisation, the Benelux and Hungarian IP offices came under a bit of heat.

Michel Barnier (Commissioner for the Internal Market and Services) expressed the view that any new restriction the Community trade mark [ie restricting the concept of genuine use to use that transcended national borders] could have serious consequences for the fight against counterfeiting; it would damage SMEs and business start-ups in particular. For that reason he would like to confirm and reassure the Parliament that his services were following very closely the developments in the Member States involved.

"At this stage we are confident that the national jurisdictions will not confirm these decisions, which do not seem to us to conform with the unitary character of the Community trade mark and with the principles of the single market ... The Commission will not allow one of the important elements of the internal market to be unpicked. If we let this happen due to the somewhat protectionist temptations in this or that country, it will be the SMEs who will be the first victims. We are therefore determined to say ‘stop’ to these temptations".

In the event that the decisions are not overturned at a national level (which Michel was confident they would be), the Commission would consider starting infringement proceedings.

Malcolm Harbour (Chairman of the Committee on the Internal Market and Consumer Protection) described the actions of the Benelux and Hungarian offices as “naked self-interest”:

“I want to thank the Commissioner very much indeed [Hmm, says Merpel, I thought being Commissioner was a thankless task ...] for making it absolutely clear that the behaviour of the two trade mark offices concerned – in Benelux and in Hungary – is absolutely unacceptable".

I emphasise that very strongly, because this is clearly an attack on the fundamental principles of the internal market. The first thing my committee intends to do – and I will make sure it happens – is that, when the Minister for the Internal Market (and indeed the Hungarian Minister, from January onwards) comes to my committee, we will make sure that we ask this question and ask them to go directly to their trademark offices and say this is not acceptable.

Why is it not acceptable? Because it is a fundamental attack on the basic principle of the internal market that there should be no discrimination of any kind on companies, wherever they operate in a single uniform unitary market. In this case it is even worse, because this proposal – or proposed actions, if they were to be upheld – actually discriminates against small enterprises as opposed to larger enterprises.

I cannot understand why it is that, after all the time that we have had the Office for Harmonisation in the Internal Market (the trade mark office) in operation, we suddenly find these two trade mark offices doing this [Shall we tell him?]. Perhaps it is because the cost of registering a European trade mark has come down, because they are operating it so efficiently.

Of course, these two trade mark offices, in trying to sustain these objections to allowing people to register trade marks, will be requiring the companies concerned to register in their own jurisdictions. This is naked self-interest on behalf of these organisations. It cannot be allowed to stand. It is fundamentally against the principles of the European Union and, by the way, it also undermines – as the Commissioner rightly says – a major priority for this Commission, which is innovation, getting new products into the market and making the internal market work better.”

tytoc collie is most impressed at these expressions of principle since it was ever his feeling that, whatever the merits of the Benelux/Hungarians' legal arguments -- and their arguments are not entirely devoid of merit -- the principle involved was too big for anyone to let the actual law stand in its way. In any event, it's good to see European Parliamentarians discussing anything to do with intellectual property, since it shows that (i) the subject really is on the agenda and (ii) they know it's there.  Merpel adds, some folk might unkindly comment that, while the European Parliament doesn't yet know much about IP, its expertise in "naked self-interest" is unrivalled ...

Hungarian goulash here and here

British inventiveness: fact or myth?

Remember the good old days when British inventiveness loomed large ...

tytoc collie's friends at the Chartered Institute of Patent Attorneys (CIPA) have spurred him into action, even though this member of the blogging team is trying hard to be on holiday this week and keep away from the keyboard. The cause of his sudden activity is a press release, issued tomorrow (28 September 2010) and entitled "President of UK patent attorneys praises Japanese achievements in new technology but claims credit for UK in laying foundations" [a descriptive title, if not the most catchy one]. The press release runs thus:

“As a country, Japan is now the second biggest user of PCT, the international patent system, and Japanese company Panasonic is the biggest single user,” said Alasdair Poore, President of the Chartered Institute of Patent Attorneys, welcoming on 28 September a delegation of 14 patent attorneys from the Japanese Patent Attorneys Association.

“Technological development and patent filings have grown phenomenally in Asia and Japan continues to be a leader [well, you can't argue with that]. But while we recognise and applaud Japan’s recent achievements,” he added, “we should not forget that modern patent law has its roots in the English 1624 Statute of Monopolies [some say 1623: it would be great to have a definitive ruling]. With its patent system, Britain developed its own proprietary technology and commercialised a number of new technologies, including mechanical looms and the steam engine. This was the start of the industrial revolution. And British technology didn’t stop in the 19th century [Merpel has just ejected by the back door for suggesting a "When did British Technology Stop?" competition]: a study by the Japanese Trade & Industry Ministry - MITI [or METI, as the Japanese now call it]– in the 1980s apparently concluded that 54 per cent of the world's most important inventions were British.” [tytoc collie has never seen the MITI report and wonders whether an English version of it exists.  He has however heard this figure, sometimes inflated to anything up to 75%, cited as evidence that the Japanese have simply stolen and successfully commercialised vast swathes of British innovation -- a proposition which the Kat feels cannot be supported by evidence].

The group of Japanese patent attorneys are visiting London following a visit to Tokyo by UK patent attorneys in 2008. ... The aim of the reciprocal visits is to encourage collaboration between the profession in Japan and CIPA’s members – UK-based professionals who are generally also qualified European Patent Attorneys, able to support Japanese colleagues with not only their UK but also their European and international work.[This sounds like good diplomacy and/or marketing, says the Kat]

... Said Alasdair Poore, “These reciprocal visits give us greater appreciation of each other’s rich heritage in technological development and in effective use of the international IP system.” [An elegant flourish of harmless rhetoric -- bravo!]

The Myth of MITI here
MITTY here
NITTY GRITTY here
KITTY here

Telecinco v YouTube: a Spanish landmark?

Readers may by now be well aware of the decision of a Madrid court to dismiss copyright infringement claims brought against YouTube by Spanish television broadcaster Gestevision Telecinco SA. This decision is welcomed by YouTube's owner, Google, which is currently involved in similar copyright disputes in several European countries. According to the Wall Street Journal, Telecinco claimed that the posting of audiovisual content in which it owned copyright infringed its intellectual property rights, and that YouTube was liable when users uploaded copyright-infringing material. The court rejected those claims in a statement.  Telecinco has already said it would appeal.  Google is confident that it will carry on winning in court:

"The court recognized that YouTube is merely a content-hosting platform and should not be made to pre-screen videos before they are uploaded",

the online mammoth said, adding that the result was a "clear victory" for the company, which also has ongoing copyright infringement litigation in Germany, France, Italy, and Belgium (it lost in Germany but is appealing).  Merpel notes that the Guardian calls the decision a "landmark" ruling: she wishes people wouldn't use the word for first-instance decisions in disputes that go on appeal -- it's the final ruling that makes the landmark, since trial judges' decisions are often writ in water.

tytoc collie's friend Carolina Pina (Garrigues Abogados), who coincidentally represented YouTube in the Spanish litigation, has kindly sent him a non-official English translation of the decision, which you can read here.

Spanish landmarks here and here ...
... but is this a Spanish landmark too?

Autum (Fall) / Winter 2009 / 2010 Fashion Trends pictures

As the world slowly pulls itself out of an economic depression, the Fall 2009 (Autumn 2009) season will largely define what 2010 fashion will look like. From over the knee boots to capes and cloaks, our fashion trends guide for the colder months of 2009 and 2010 will help to keep your wardrobe sorted, and your looks on the cutting edge.

Over-the-knee boots: these are the must-have item for Fall 2010; but those daring enough will find the tops of their boots creeping up even higher with thigh-high boots also making it mainstream. From elegant suedes to darkly futuristic wound-and-bound leathers, the options are many and various.

Ripped thights and Stockings: Our wartime female counterparts would never have imagined this day; where laddered stockings are not only acceptable, but fashionable. The ripped stocking trend is a close cousin of the ripped denim trend, a step towards a new era of neo-Grunge.

Fall fashion trends: Majestic lingerie of Simone Perele for the Fall Winter 2010-2011

Baroque, majestic, and very decorated intimate clothing is the key element of the Simone Perele collection for this Fall Winter 2010-2011. The collection includes several lines, all of them inspired by the splendor of the charming haute couture world.

Monday miscellany

Maybe what the IP community
needs is an all-action team ...

The October issue of Oxford University Press's monthly Journal of Intellectual Property Law & Practice (JIPLP) has just come out (table of contents here). The Editorial, "Time for a Tsar - and a Tsar for Our Time?", seeks to further debate on the desirability or otherwise of appointing "IP Tsars", whether on the United States model or on the basis of other criteria, to ease communication between IP industry and government and to help initiative improvements in the IP environment. tytoc collie is going to be pushing this topic in the coming weeks and hopes very soon to announce the details of a seminar on that very issue. Meanwhile you can read the Editorial, penned by IPKat team member Jeremy, here.

It might sound like the name of a new credit card, but IP Advantage is the name of a new World Intellectual Property Organization database which "profiles the intellectual property experiences of inventors, creators, entrepreneurs, and researchers". According to tytoc collie's best information, this tool aims to promote a better understanding of how IP is created and protected, and how inventors, creators and society at large benefit from the IP system. IP Advantage is said to be "a fully searchable one-stop gateway to the wealth of case study material available on WIPO’s website", the case studies being handy for promoting innovation in both developed and developing countries. Further details are available here.  Merpel says, great idea -- but how long will it be before IP's detractors are running an IP Disadvantage database of things that, well, don't cast IP in such a favourable light? And how can the IP community get its positive message to the widest possible audience? This is a step in the right direction, but it's just the first step: its success will depend on how it's followed up, and how case studies tackle thorny subjects like biopiracy (is there a neutral, non-judgmental name for it?) and dealing with peer-to-peer file sharing?

Only one task is more impossible
for the Commission than solving
the EU's IP problems: that's
recognising that there are any ...

Can anything be more ground-breaking, earth-shattering and paradigm-shifting? The European Parliament, having listened to the combined complaints of tytoc collie and Merpel here, has adopted Resolution (2009/21789INI) on the enforcement of intellectual property rights in the internal market.  Europe's elected representatives say the European Commission's communication of 11 September 2009 (COM(2009)0467) on enhancing the enforcement of IP rights in the EU does not go far enough, since current law is insufficiently harmonised for the proper functioning of the internal market. The Commission is told to create a directly enforceable EU-wide copyright law [Parliament may as well have told the Commission to invent a way of making children eat spinach] and to assess how to strengthen and upgrade the legal framework with respect to the internet [without, presumably, spoiling the effects of the E-Commerce Directive and the Court of Justice rulings relating to trade marks as keywords]. This may take the Commission a little while ... [Thank you, Antonio Selas (Cremades & Calvo-Sotelo) for links to the European Parliament's adoption of this report by MEP Marielle Gallo].

These Golden Balls are best avoided

Something else that's going to take a little while is the horrendous task of translating vast quantities of French into English that faces gutsy fighters Inez and Gus Bodur.  The story so far: small traders Inez and Gus sought Community trade mark protection for the word mark GOLDEN BALLS; Intra Presse, owners of the BALLON D'OR mark, opposed, citing a likelihood of confusion.  The OHIM Opposition Division dismissed the opposition on the basis that the marks simply weren't similar -- which indeed they're not (see earlier post here).  Intra Presse has now submitted its Grounds for Appeal (39 pages), supported by over 600 pages of evidence -- in French. Please see attached grounds. The Bodurs, who have already lost their shop and faced major expenses in getting this far, not surprisingly consider this somewhat oppressive. tytoc collie accordingly asks if there's anyone out there who (i) can cope with the French and (ii) knows anything about trade mark law who can give them a hand in translating the Grounds for Appeal into English.  If so, can they please email Inez and Gus here and let them know. Merpel adds, if anyone wants to say "hi" to them, they'll be at the Brand Licensing Exhibition at Olympia, Stand B050, from today till Thursday 30 September 2010.

Here are two quick reminders, for those of who need them.
* Wednesday is the closing date for tytoc collie's poll on the controversial question of how to pronounce "patent".  By way of background, last week's post ("Say it the way it is ...", here) has attracted a remarkable diversity of learning on the subject via readers' comments on the etymology, sociology, psychology and history of the subject. The Kats hope that you'll add your knowledge to this growing resource too.
* There's still some room for anyone who wants to register for the "How to Write an Effective IP Press Release" seminar which is taking place next Tuesday, 5 October at the London office of Olswang LLP.  Click here for details.

Sigur Rós sound-a-likes: homage or fromage?

tytoc collie confesses, in at least one of his incarnations, to being a big fan of the Icelandic group Sigur Rós, and keeps up to date from time to time with what they are doing via their website "eighteen seconds before sunrise".  A recent article on the website amused and intrigued him.  If you are also a fan of the group, you might find the music accompanying the advertisements in the videos below strangely familiar. tytoc collie will leave his readers to reach their own conclusions, and would be interested to see what they think.

Golf madness strikes Newport

The soi disant Intellectual Property Office has gone a bit golf mad.  In a new page on their website, they report that Newport is the home of both intellectual property (really?) and the 2010 Ryder Cup, which is due to tee off on October 1st.  They also use the opportunity to provide some tasty facts and stories about IP and golf, the most unusual of which (to this Kat's eyes at least) is that there is a weblog that exists purely for the purposes of looking at IP aspects of golf (The IP Golf Guy), which is worth a look if only to see how much there is to say on the subject (quite a lot, apparently).

Right: tytoc collie and friends try their paws at golf.

In relation to golf and IP, the IPO mention the surprising story of the Titleist Pro V1, also known as the "billion dollar golf ball" (and available from all good John Lewis stores), which has been the subject of a rather large patent dispute in the US.  They also point out the dispute about whether Newport rap superstars Goldie Lookin Chain were infringing copyright in an Alicia Keys song.  What this has to do with golf is quite beyond tytoc collie but, for some Friday fun, the video below is well worth a look, provided it hasn't been taken down by YouTube.

If all that isn't enough golf- and Newport-related trivia for you, tytoc collie has noticed that there have also been a surprising number of golf-related patent decisions coming out of the IPO in recent times, some of which this Kat has had the pleasure to summarise in his regular CIPA journal columns.  These include decisions relating to patentability of a golf putter (Hideaki Koiwai, BL O/373/07), a wrist-mounted golf swing analyser (Suunto Oy, BL O/089/10), a method of determining the length of a golf club (Darran Bird, BL O/188/10), a method of mapping a golf course (Sports Analysis Limited, BL O/076/09), and a golf driving range complex (David Evans, BL O/175/10).  Clearly the IPO is on to something about golf and IP being an interesting mix.

Likelihood of Success in Percentage Terms; What Does It Really Mean?

Anyone who practices trademark prosecution has likely faced that most dreaded of questions: "what is the percentage likelihood that you can overcome the examiner's objection". Indeed, some of you may have put that question (or have been made to do so by your client) to your associate. I have thought long and hard about this, both from the vantage of being asked it as well as seeking the information from others. Here are some of my thoughts.

First and foremost, there is the issue of applying numerical percentages to an inherently uncertain activity. Frank Knight, the famous economist from the University of Chicago, taught us nearly 90 years ago that there is a fundamental difference between uncertainty and risk. In his own words:

"Uncertainty must be taken in a sense radically distinct from the familiar notion of Risk, from which it has never been properly separated.... The essential fact is that 'risk' means in some cases a quantity susceptible of measurement, while at other times it is something distinctly not of this character; and there are far-reaching and crucial differences in the bearings of the phenomena depending on which of the two is really present and operating.... It will appear that a measurable uncertainty, or 'risk' proper, as we shall use the term, is so far different from an unmeasurable one that it is not in effect an uncertainty at all."

In other words, uncertainty is characterized by being incalculable, as opposed to risk, for a which a meaningful calculation is possible (à la probability). In truth, the decade's most prominent curmudgeon, Nassim Nicholas Taleb, expressed skepticism over whether any risk can really be calculated. Thus, in The Black Swan, Taleb famously questioned Knightian uncertainty in the following words:

"In real life you do not know the odds; you need to discover them, and the sources of uncertainty are not defined. Economists, who do not consider what was found by noneconomists worthwhile, draw an artificial distinction between Knightian risk (which you can compute) and Knightian uncertainty (which you cannot compute), after one Frank Knight, who rediscovered the notion of unknown uncertainty and did a lot of thinking but perhaps never took risks, or perhaps lived in the vicinity of a casino. Had he taken financial or economic risk he would have realized that these "computable" risks are largely absent from real life! They are laboratory contraptions."

Whether or not one accepts Knight's or Taleb's view of things on this point, the

upshot for us is the same. There is something deeply troubling about being asked to give a percentage to the likelihood of success of a trademark application, an activity that certainly lies within the broad field of uncertainty.

Rare is the slam dunk rejection ("Coca Cola" for soft drinks; "table" for tables) or slam dunk acceptance ("UBUGUGU for any goods or services). Not infrequently, the tendency of a trademark owner is to select a mark that, at least obliquely, seeks to relate to the goods or services to which the mark is being used. As such, the ultimate fate of such a mark upon examination or the like (depending upon whether the jurisdiction addresses relative grounds only upon a challenge by a third party) will usually fall within the parameters of Knightian uncertainty. And yet--there I am, being asked (or asking) for a percentage view of likeklihood of success.

For students of psychological measurement, it would be a fascinating study to map out the parameters by which we trademark practitioners give a percentage estimate for likelihood of registration success. Some of these considerations may be the following:

1. How broad a band are we setting when we use the ubiqitous 50/50 as the anchor?
2. Do we err on the side of overstating or understating the likelihood of success?
3. If so, what are the factors that lead us to overstate or understate?
4. If so, how does that tendency affect the percentage that we give?
5. Are the percentages that we give linear or non-linear? If so, in what maner?

From the point of view of the person seeking the percentage, the focus is on how such person uses such information. To wit:

1. Does it affect a decision to instruct the associate to proceed with prosecution?
2. If so, how is the information used to reach the decision?
3. Does it matter if the percentage given by the associate is accompanied by a narrative that further describes the factors underlying the likelihood of sucess?
4. Does the decision-making of the instructing party differ, depending upon whether the request for a percentage estimate comes from the instructing party or the client?

Questions galore--any thoughts or guidance would be most welcome.

Questions, questions, questions

"Dangerous" Intellectual Property Myths

The Cabbit, or Rabbit-Cat:
myth or reality?

tytoc collie is grateful to his sometime student, scholar and gentleman Tim Pinto (Taylor Wessing) for the following, which he penned together with well-known European trade mark cowboy, scholar and gentleman Roland Mallinson:

"Most people these days have heard of intellectual property (or at least copyright). While the general public's awareness of IP is probably greater now than ever before, there seem to be numerous myths circulating in this field. The myths generally start "It's OK to copy a design/copyright work if…" and then many variations exist. These include "…if you only copy 10%" and "…if you acknowledge the author of the original work."

Such myths, some even amusing, can be dangerous. They can lead to serious negative consequences for companies if believed and acted on. Might your company's designer or marketing executive be merrily copying the work of others having consciously made 3 (or 7) changes to "avoid" infringement? If so, the company could be facing injunctions and expensive damages claims.

The IP team at Taylor Wessing has been collecting IP myths. So far, they have gathered over 25 examples but there are probably many more doing the rounds. Their idea is to expose the myths as the traps for the unwary that they undoubtedly are and thereby promote a better understanding of IP.

The myths demonstrate a fundamental misunderstanding of intellectual property law. The legal test for copyright infringement, for example, is whether the defendant has copied all or a substantial part of the earlier work (e.g. a painting or book). In design law, the test is whether the design in question 'does not create on the informed user a different overall impression.' Therefore, changing three or seven design features might prevent infringement but it depends on what and how much has been copied from the original. Take the design of a coat. Merely changing the style and colour of the buttons (2 changes), the angle and width of the lapels (2 more) and the fabric, buckle and number of holes of the belt (3 changes) amounts to seven, but the new coat may still look the same as the old one to most people.

In the second example, merely acknowledging the source of an earlier work is not enough to avoid copyright infringement. There must also be "fair dealing" with the earlier work and this dealing must be for the purpose of, for instance, criticism or review or reporting current events.

There is a practical message behind the 'acknowledging the source myth'. Many copyright owners essentially want recognition, and it is the absence of attribution, which sometimes causes them to make a legal claim. Other copyright myths are that is necessarily safe to copy some text, a piece of music or a design "...if it's in the public domain (i.e. I can get it easily from the internet)", "…if you don't charge others for the copy you've made", "…if you're only copying no more than 2 bars of music" or "…if you are 2 (or 5) notes away from the original music." The one the lawyers probably hear most often is, "Everyone else is doing it, so it must be OK for me to do it too."

There are trade mark myths too. A common one is that registering a company name or a domain name is the same as having a registered trade mark [but a good deal cheaper, adds Merpel!]. However, company and domain names give no IP rights at all. Having said that, cybersquatters exploit the hassle and cost for companies of trying to obtain a domain or company name using their brand. The cybersquatter persuades the company it is cheaper to pay them than to pay their lawyers – which sadly may well be true. But, as with pirates and kidnappers, paying off cybersquatters for an easy life just encourages them to carry on.

A very common, but understandable, misconception is that the ™ sign means that a trade mark is registered. Only the ® symbol means that, and it is a criminal offence to use the ® symbol if there is no registration. Another trade mark myth which we heard was that a company could avoid infringement by moving two Pantone® colour shades away from a coloured trade mark or design. For readers who have not seen a Pantone® colour-chart, two shades is not much of a change. It is unlikely to turn a confusingly similar logo into one which does not cause a likelihood of confusion.

On the patent side, there is a myth that owning a patent gives a right to exploit the invention. A patent, like other intellectual property rights, only gives its owner a right to exclude others from using the invention. Despite owning a patent, the "patentee" may infringe someone else's patent by exploiting his or her invention and, if so, would need to obtain a licence.

How some of these myths develop is a mystery in itself. A difficulty with the test for IP infringement is that it is not an exact science. People look for generalisations in order to give a measure of certainty and comfort. This can lead to the myths. In some cases, a lawyer may have advised on a particular set of facts in the past and someone decided to make a general rule from it. It is only natural that people want clear guidelines, which give certainty. However, most of the infringement myths provide a rigid rule of thumb, which is too lax and may get companies into hot water if believed. It can be a classic case of a little knowledge being a dangerous thing".

Timothy and Roland Mallinson are looking for more of your favourite myths.  If there are any that you'd like to share with them, you can email them here.  They promise that a selection of myths will appear on Taylor Wessing's website later this year -- but tytoc collie (whose favourite myth is that if you win in court, the other side has to pay your costs) hopes to hack into their system for a sneak preview that he can share with his readers ...

Popular myths here, here and here
Mythical cats here

Say it the way it is ...

tytoc collie's respected friend Gwilym Roberts has written to tell him:

"If you phone the Hague EPO on 0031 703 404500 you get a message saying "Welcome to the European Paytent Office". Does that make it the official pronunciation?"

Never wishing to presume to give a ruling on this sensitive matter, and being quite unable to find the relevant provision in the European Patent Convention, its Rules, travaux and its guidelines which deals with how the word should be pronounced in English, the Kat has organised a poll, which you can find in the top left hand of this blog's front page, in which readers are invited to offer their preference.

Pronunciation of 'patent' here, here and here