Tuesday, 26 August 2014

JIPLP-GRUR Int cooperation to continue

Following a teleconference earlier today between Oxford University Press's Journal of Intellectual Property Law & Practice team and their counterparts at Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil (GRUR Int.), the two titles have reviewed their cooperation over the past two years and have enthusiastically decided to continue it.

Among the fruits of cooperation are the jointly hosted events, of which there have so far been two in London and two in Munich, at which speakers who in general represent essentially common law and civil law perspectives address IP topics of mutual interest from their respective standpoints, contrasting their approaches and sharing thoughts about their respective strengths and weaknesses.  The next joint event takes place in January 2015. This will focus on evidence and procedure in IP litigation.  Watch this space for further details.

Wednesday, 13 August 2014

Try bombed—rugby league injunction application fails

Author: Stephanie Essey (Lawyer, Allens)

Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd [2014] FCA 595, Federal Court of Australia, 6 June 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu143, first published online: August 11, 2014

Sports Data, the former statistics supplier to the National Rugby League (the NRL), sought and failed to secure an interlocutory injunction against what it saw as the misuse of copyright in its database and the confidential information in it by Prozone, the NRL's new statistics supplier.

Legal context

Sports Data v Prozone builds on recent case law addressing copyright in databases—most notably, IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 80 IPR 451 and Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 90 IPR 1. Against that backdrop, the decision emphasizes the importance of proving reproduction of a substantial part and causation, both of which can be influenced by the way the work is identified.

In determining whether to grant an interlocutory injunction, Wigney J applied the principles recently expounded by the Full Federal Court in Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238 (Apple v Samsung).

Facts

Sports Data served for several years as the official supplier of statistics to the National Rugby League (NRL), but its contract was terminated by the NRL and Prozone was appointed to the role. While collecting and providing statistics to the NRL, Sports Data had developed a database populated with fields which set out events in NRL games that were to be recorded. Sports Data alleged that Prozone copied confidential input criteria from the Sports Data database without consent in the process of creating its own event template. Sports Data also claimed that Prozone infringed its copyright in the input criteria by reproducing a substantial part of its copyright work in the Rugby League Definitions Guide 2014.

Analysis

Weak confidentiality case

The facts showed that Sports Data had failed to adequately particularize the information it claimed to be confidential. Sports Data asserted that the entire compilation of events in the database constituted confidential information, but Wigney J found that it was not possible to infer that Prozone had used the whole compilation rather than particular items contained within it.

Further, Sports Data did not succeed in proving that the information had the necessary quality of confidentiality. While the database contained a notice asserting confidentiality, it could be accessed by customers (including NRL clubs) without their viewing that notice. Although Wigney J drew the prima facie inference that Prozone had indeed received some information about Sports Data's input criteria, the circumstances in which Prozone received the information remained unclear to the court—most importantly, whether those circumstances identified an obligation of confidence. A purported notice of confidentiality provided by letter to Prozone was ineffective as it merely asserted copyright and did so at least a month after Prozone had received the information.

Weak copyright case

Wigney J found that Sports Data had, at best, demonstrated a very weak prima facie case of copyright infringement.

Wigney J emphasized the ambiguity in Sports Data's definition of the alleged copyright work; it was unclear whether the work comprised the input criteria (simply a list of rugby league event descriptions) or particular tables or fields from the database. Ultimately, Wigney J determined that the work constituted four tables drawn from the 50 tables comprising the database and that Sports Data employees had authored those tables, and there was enough mental effort and originality in the compilation such that the work may have been eligible for copyright protection.

However, Wigney J held that Sports Data had not established a prima facie case that Prozone had reproduced a substantial part of the copyright work. The absence of a substantial objective similarity between Sports Data's compilation and Prozone's Guide (whether considered with respect to quality or quantity) was instrumental. While some event descriptions had been reproduced, Sports Data had failed to demonstrate that the selection, structure and arrangement (which are critical when the work is simply a list of factual material) were substantially identical. Wigney J was also unpersuaded by Sports Data's evidence regarding causation, due to the lack of evidence that Prozone had actually obtained and copied all or a substantial part of the copyright work.

Wigney J briefly considered whether extracts from a much larger work (here, four tables from among 50) could legitimately comprise a copyright work. In particular, Wigney J expressed concern that allowing applicants to assert copyright in certain sections of a larger work might allow them to sidestep the substantiality requirement in an infringement claim. Wigney J found that it was not necessary to reach a conclusion on the question, but expressed the preliminary view that defining a copyright work in this manner might well prove impermissible at trial.

Balance of convenience not in Sports Data's favour

While it was strictly unnecessary to consider the balance of convenience, Wigney J addressed the arguments the parties had raised. He found that the balance of convenience did not fall in Sports Data's favour and that interlocutory relief would not have been awarded even if Sports Data had made out a prima facie case with regard to either of the causes of action (Apple v Samsung). The evidence led by Sports Data regarding its financial and business position was incomplete and therefore inconclusive, and Wigney J reasoned that its position would be unlikely to be improved by the grant of the injunctions it sought. For instance, there was no evidence that the NRL clubs would seek to engage Sports Data's services again. For that reason, Wigney J was not satisfied that damages would be an inadequate remedy for Sports Data or that Sports Data would suffer irreparable harm if interlocutory relief was not granted.

Further, Wigney J considered it possible that Prozone and its employees would suffer harm if an injunction rendered it unable to perform its obligations under its contract with the NRL. The NRL would also be inconvenienced, as it would need to retain an alternative statistics provider.

Three final factors cited by Wigney J in refusing to grant the injunctions were Sports Data's very weak prima facie case, its delay in seeking interlocutory relief and the fact that it sought unjustifiably broad injunctions without time limitations.

Practical significance

Sports Data v Prozone serves as a reminder to define carefully and specifically the literary work in a copyright infringement claim and highlights the complexities of proving reproduction of a substantial part and causation in the database context. It raises a broader question about whether copyright can justifiably be asserted over specific components of a larger work without compromising the substantiality threshold.

With respect to confidential information, the decision signals that it is crucial to flag confidentiality at the earliest possible opportunity (ideally before, or when, the information is imparted). It is strongly advisable to seek interlocutory relief in a timely manner and to ensure that proposed injunctions are framed with precision.

The author thanks Tim Golder and Lester Miller of Allens for their assistance with this article.

Wednesday, 6 August 2014

Safe and sound: CJEU confirms a safener can be an active ingredient too

Author: Laura Whiting (Hogan Lovells International LLP)

Bayer CropScience AG v Deutsches Patent- und Marken Amt, Case C-11/13, EU:C:2014:2010, 13 February 2014, Judgment, Court of Justice of the European Union (CJEU)

Journal of Intellectual Property Law & Practice (2014), doi: 10.1093/jiplp/jpu139, first published online: August 1, 2014

The CJEU has confirmed the broader interpretation of ‘active substance’ proposed by AG Jääskinen (EU:C:2014:86) in the context of supplementary protection certificates (SPCs) for plant protection products—will this decision result in a move away from the strict approach previously applied in relation to SPCs for medicinal products?

Legal context

Bayer is a direct reference from the German Patent and Trade Mark Office (DPMA) in relation to the scope of supplementary protection certificates (SPCs) for plant protection products. The referral concerns the question of whether a ‘safener’—a substance contained in a plant protection product which improves herbicide selectivity for weeds by protecting crop plants from the toxic effect of the herbicide—falls within the scope of the terms ‘product’ and ‘active substance’ in Plant Protection Regulation 1610/96 (the ‘PP Regulation’). Like the SPC Regulation (469/2009), the PP Regulation requires that a valid authorization to place the ‘product’ on the market has been granted as a pre-requisite to the grant of a certificate (Art 3(b)). Under Article 1(8) of the PP Regulation, a product is the active substance or combination of active substances in the plant protection product.

Facts

The product concerned in this reference is MaisTer, a combination of the herbicides foramsulfuron and iodosulfuron, and the safener isoxadifen. Bayer's marketing authorization for MaisTer named only foramsulfuron and iodosulfuron as the active substances (although an earlier provisional MA had also listed isoxadifen as an active substance). Bayer applied for an SPC for isoxadifen based on this MA. The application was rejected on the grounds that the safener was not an ‘active substance’ and therefore could not be a ‘product’ under the PP Regulation.

Analysis

The Court of Justice of the European Union (CJEU) has ruled that the definition of ‘active substance’ can include safeners (or other substances) where the substance has a ‘toxic, phytotoxic or plant protection action of its own’. In such a case, the safener may be entitled to SPC protection if it satisfies the other requirements of the PP Regulation.

Article 1(3) of the PP Regulation defines an active substance as a substance which has ‘general or specific action: (a) against harmful organisms; or (b) on plants, parts of plants or plant products’. The CJEU interpreted Article 1(3) in light of Article 1(1) which sets out the effects which a ‘plant protection product’ containing one or more active substance may have. Therefore, according to the decision, any substance which exerts a toxic, phytotoxic or plant protection action itself is to be included in the definition, whether or not its action is direct or indirect. This is slightly different to the definition proposed by AG Jääskinen, who considered an active substance was one which ‘causes an action, chemical or biological, as an integral part of a causal chain whose objective is to produce a general or specific action’ on a plant.

The Advocate General's reasoning took support from two earlier CJEU decisions. Söll v Tetra (C-420/10, Judgment, EU:C:2012:111) related to the interpretation of Directive 98/8 on the placing of biocidal products on the market, which also contains a definition of active substance. In that case, the CJEU found that a flocculating agent could be an active substance in a biocidal product, as although it did not have a direct harmful effect on the organism itself, it was an integral part of a causal chain in controlling it. Chemische Fabrik Kreussler v Sunstar Deutschland (C-308/11, Judgment, EU:C:2012:548) related to the definition of ‘medicinal product’ in Directive 2001/83 on medicinal products for human use. The CJEU there considered that a substance which does not interact with a human cellular constituent may nonetheless qualify as a medicinal product if it directly or indirectly restores, corrects or modifies human physiological functions.

The CJEU's reasoning follows the rationale of Söll and Chemische Fabrik Kreussler in not requiring a direct relationship between the active substance in question and the effect produced. The Court also relied on its previous decisions concerning the SPC Regulation in which both excipients (Judgment in MIT, C-431/04, EU:C:2006:291) and adjuvants (Order in GSK, C-210/13, EU:C:2013:762) were held not to be entitled to SPC protection on the basis that both were substances ‘with no pharmaceutical effects of [their] own’ and therefore could not satisfy the definition of ‘product’ in the SPC Regulation. These cases are cited by the CJEU in support of its reasoning that a substance with no toxic, phytotoxic or plant protection action could not be considered to be an active substance.

Having set out the test under which a safener may qualify as an active substance, the CJEU then referred the decision on the facts of this specific case back to the national court.

Practical significance

The CJEU's decision does not suggest that medicinal products and plant protection products should be treated differently. While it relied on its decisions in MIT and GSK, no factual comparison between those cases and the present one was undertaken. It is therefore unclear whether this decision marks the start of a divergence between the legal treatment of SPCs for plant protection products and those for medicinal products, or whether it indicates the first step in a shift in direction for the jurisprudence of both systems.

Applying the Bayer decision to SPCs for medicinal products could (with the appropriate facts) potentially open up a wider category of products to SPC protection. In the case of adjuvants in particular, following the reasoning of the CJEU, it could be argued that if the adjuvant has an effect on the effectiveness or tolerability (or other qualities) of the active substance, then it should qualify as a ‘product’ under the SPC Regulation.

The CJEU will have an opportunity to consider the question of adjuvants again in Forsgren (C-631/13, a reference lodged on 2 December 2013). In this case, the adjuvant is a protein carrier molecule which is covalently bonded to various pneumococcal polysaccharides in a vaccine composition and is said to intensify the effect of those polysaccharides. It is further said to have a therapeutic effect of its own. The CJEU has been asked whether this carrier protein is itself an active ingredient either by virtue of its own therapeutic action or as a result of its intensifying effect on the pneumococcal polysaccharides. If the reasoning in Bayer were followed, this should be enough to qualify it as an active substance—but readers will have to wait for the answer, as no dates in the procedure have yet been set.

Monday, 4 August 2014

Balancing tool or escape clause? Proportionality in temporary relief proceedings before the Greek courts

Author: Nikos Prentoulis (Prentoulis Lawyers & Consultants)

Single-Member First Instance Court of Athens, Decision No 4209/2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu135, first published online: August 1, 2014

A recent judgment of the Athens First Instance Court in preliminary injunction proceedings over trade mark infringement illustrates how the principle of proportionality may be (mis-)used.

Legal context

Within a ‘classic’ likelihood of confusion and famous trade mark violation case, the interesting part of the judgment lies in the court's interpretation of Article 155 of Greek Law No 4072/2012 on Trade Marks, which subjects any corrective measures for trade mark infringement to the balancing ‘hand’ of the principle of proportionality, in conformity with Articles 3(2) and 10(3) of Directive 2004/48.

Proportionality is no stranger to European intellectual property law (see Article 20 of the ‘InfoSoc’ Directive 2001/29) and it also informs the application of Articles 692(1), 692(3), 731 and 732 of the Greek Code of Civil Procedure, setting out the powers of Greek judges in temporary relief proceedings to ‘provisionally regulate’ the disputed ‘situation’, without being bound by the particular demands of the litigants. However, the express inclusion of the principle of proportionality in the normative ethos of the recently revised Greek trade mark law, centralizes its role in trade mark adjudication.

Facts

Hard Rock initiated preliminary injunction proceedings against a Greek entity, based in Athens, trading in apparel, accessories and souvenirs on the well-known Paradise beach in the island of Mykonos. Hard Rock alleged unauthorized use of its Greek and Community HARD ROCK CAFE and Community ROCK SHOP trade marks for similar goods and services and on store signage. The action was accepted and the preliminary injunction request was granted, but the court dismissed the applicant's request to publish the decision either on the internet (in a web news portal) or in the press. According to the court, the defendant had ‘already’ (presumably at the time of the hearing in November 2013) ceased the unauthorized use of the marks. Accordingly, the orders for preliminary injunction and seizure of infringing items constituted ‘adequate’ corrective measures. Publication of the judgment was further specifically denied due to the ‘limited scope’ of the infringement, obviously as a result of the cessation of the infringement.

Analysis

One can reasonably question this particular part of the judgment. ‘Heralding’ that it has stopped the alleged infringement, after the end of the high-season in the Greek islands (May–September), the defendant should not have impressed anyone. The minimal commercial interest in the tourist market in the Greek islands after September is common knowledge in Greece; just ask any anti-counterfeiting manager responsible for the territory. Post-September trade mark infringement in the Greek islands could be of ‘limited scope’, but infringement between May and September is by definition severe. Significantly, Hard Rock filed the action in early July, which can only mean that the infringement subsisted within the high season.

Moreover, why would anyone who has ceased the use of the claimant's marks ever set foot in the courtroom (unless he is waiting for next May)? Conventional wisdom and IP practice in Greece state that taking down marks and then appearing in court to argue against an injunction is usually a sign that one does not particularly savour committing oneself to not repeating the use of the marks in the future.

One may argue that the qualities of the infringing behaviour should not inform the application of proportionality and render it a ‘punitive’, ‘outing’ mechanism. So, why does the judgment mention it?

But even if that were the case, publication of the judgment is per se a standard corrective measure of trade mark infringement, even in temporary relief proceedings. Considering that trade mark law undeniably also protects consumers' interests, publication has long been advocated and consistently granted as an effective remedy for IP infringement. Moreover, Greek trade mark law, via its recent revision in 2012, explicitly provides for publication of judgments as a civil remedy in trade mark infringement cases. In addition, privacy concerns cannot hinder publication since court judgments are a matter of public interest, subjected to the demand for transparency of the exercise of the judiciary powers within a democratic society.

Accordingly, publication of a preliminary injunction judgment can essentially be hindered when the case is a doubtful one or when the impact of the infringement has indeed been minimal. But non-publication cannot be justified by the defendant having ceased the use of the marks involved. Moreover, by all standards, the infringing use of a well-known mark both on goods and store signage in Mykonos in the summer is anything but minimal.

In addition, the order for the provisional seizure of infringing items and store signage, which had already been removed by the defendant, appears acutely incompatible with the court's own reasoning. The version of proportionality inferred from the particular judgment should direct the court against such (fruitless) seizure.

The court may very well have had good reasons for rejecting the publication request, but such reasons are not evident in its reasoning; nor can they even be inferred from it. The court makes no reference, for example, to a possible swift compliance to a cease and desist letter before legal action, or any fact or circumstance that could validate its reading of proportionality.

Practical significance

Proportionality is a tool. This is not a very nice word in the human rights vocabulary, from which proportionality originates but, in adjudication terms, it is a very accurate definition. As a tool, it allows the court of a statutory law jurisdiction to ‘maneouvre’ within the particular factual environment of the case in order to deliver a sound and fair judgment. But ‘fair’ does not mean ‘free-ride’ (at least not in cases where leniency is not warranted); proportionality is not a ‘forgive and forget’ mechanism.

And this is where the danger of an interpretation of proportionality along the lines of this judgment lies: in distorting its role as a balancing tool of overly strict corrective measures and subverting the clear pro-IP rights spirit of the Greek trade mark law.

One may argue that the concerns raised above are somewhat ‘disproportionate’ themselves; this may just be an isolated ‘over-leniency’ case. But one cannot stress enough the importance of not mistaking proportionality for a single-sentence escape mechanism when, right or wrong, any court considers certain remedies as overly austere.

In defence of Greek courts, it should be mentioned that in another recent judgment of the Single-Member First Instance Court of Athens in main proceedings (555/2014), proportionality was genuinely employed to limit publication of the operative part of the judgment in the press and not also on the internet. Publication on the internet might have been more effective. Still, this judgment illustrates the intended role of proportionality.

Monday, 28 July 2014

Gold bear wars reloaded

Author: Birgit Clark (Venner Shipley LLP, London)

Higher Regional Court of Cologne (Oberlandesgericht Köln), Case ref: 6 U 230/12, 11 April 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu128, first published online: July 16, 2014

Disagreeing with the first instance court, the Higher Regional Court of Cologne held that sweetmaker Lindt's three-dimensional gold-foiled chocolate bears did not infringe Haribo's well-known GOLDBÄREN gummy bear (word) trade marks.

Legal context

In accordance with Article 5(2) of the European Union's Trade Mark Directive, Article 14(2) No 3 of the German Trade Mark Act (MarkenG) provides that it constitutes trade mark infringement ‘if a third party without having consent of the trade mark owner in the course of trade exploits the distinctive character or the repute of a well-known trade mark in relation to goods or services which are not similar to those for which the trade mark is registered without due cause and by such use takes unfair advantage of the distinctive character or the repute of the trade mark’.

Facts

German confectioner Haribo had sold its multi-coloured gummy bears wrapped in gold-coloured packaging since the 1960s and owned various registered trade mark rights in these, inter alia, covering confectionery: GOLDBÄR (in English: gold bear) and its plural form GOLDBÄREN as well as its ‘Goldbär device’; a yellow-gold coloured bear device wearing a red ribbon bow. Haribo's competitor, Swiss confectioner Lindt, producer of the well-known chocolate Gold Bunnies, had made and sold gold-foil wrapped chocolate bears (the ‘Lindt Teddy’, wearing a red ribbon bow) since 2011. Haribo took objection and brought a claim against the distribution of Lindt's chocolate bears in Germany based on its trade mark rights, asking for information, damages and the destruction of Lindt's products. In essence, Haribo argued that Lindt's bears amounted to a three-dimensional representation of Haribo's gummy bear trade marks. Lindt denied infringement and argued that gold foil and red ribbon as used on its chocolate Lindt Teddies were the same as those used on its well-known Easter chocolate Gold Bunnies. Lindt also stressed that it had intentionally refrained from using brand names such as ‘Goldbär’ or ‘Gold Teddy’ and that gold was a traditional Christmas colour. The Swiss chocolate maker thus invited the court to find that the competing products did not look in any way similar so that consumers would not be confused.

Analysis

The first instance court, the Regional Court of Cologne (Landgericht Köln, 33 O 803/11, 18 December 2012) agreed with Haribo and held that Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’ of Haribo's well-known GOLDBÄREN gummy bear word mark under Article 14(2) No 3 MarkenG. In view of the Landgericht, the appearance of the shape of Lindt's chocolate bears inevitably produced connotations with Haribo's bears.

Bearing in mind that there had so far been no decision by the German Federal Court of Justice (Bundesgerichtshof) on the question of a conflict between a word mark and a three-dimensional product design, the first instance judges emphasized that that there could be similarity between different ‘categories of trade marks’.

The Landgericht therefore applied legal principles which the Bundesgerichtshof had previously developed in precedents concerning a conflict between word marks and figurative trade marks (BGH GRUR 1971, 251, 252—Oldtimer; BGH GRUR 2004, 779, 783—Zwilling/Zweibrüder) and according to which there could be similarity where there was not only a ‘concordance in theme’ but where a term was the ‘obvious, unforced and exhaustive description’ adopted by consumers.

On Lindt's appeal to the Higher Regional Court of Cologne, the appeal judges agreed with Lindt and confirmed the lower court's view that—in theory—a word trade mark, such as ‘Goldbär’, could be infringed by a three dimensional shape, such as the defendant's chocolate teddy. However, the appeal court did not agree with the Landgericht's application of the Bundesgerichtshof's precedents in the Oldtimer and Zwilling/Zweibrüder cases on a potential similarity between different ‘categories of trade marks’. The appeal judges agreed with both parties that Lindt's teddy shape was a complex sign but did not believe that the allegedly infringed sign (here: Haribo's gold bear) was the obvious, unforced, self-contained and distinctive title and thus the closest and most fitting description of the Lindt teddy shape. The judges explained that there were several additional levels of abstraction that separated the chocolate teddy shape from the Goldbär word mark.

Further, the overall impression conveyed by Lindt's teddy was not only based on its shape and gold colour wrapping, red ribbon and the imprint of ears, face and paws but also affected by the fact that Lindt's name and logo and the words ‘Lindt Teddy’ were prominently displayed on the teddy's stomach. In this context the court also referred to the Higher Regional Court of Frankfurt's precedent in the Gold Bunnies dispute cases between Lindt and its competitor Riegelein (GRUR-RR 2012, 255), in which the Frankfurt court had found that that the shape and colour of the Gold Bunnies were of a lower level of distinctiveness than the respective word elements (‘Lindt’ versus ‘Riegelein’) displayed on the bunnies. Applying this guidance to the case at hand, the Cologne judges concluded that that consumers would regard the word element ‘Lindt-Teddy’ in particular as an indication of origin, bearing in mind that the ‘Lindt-Teddy’ was a seamless addition to Lindt's established Gold Bunny product line. The court thus disagreed with Haribo's view that Lindt had taken unfair advantage of Haribo's Goldbär by ‘approximating’ its Lindt teddy to Haribo's gold bears in order to exploit the expectations of quality that consumers associate with Haribo's bears. The judges further explained this by pointing out that Lindt was a well-known confectionery manufacturer and the allegedly infringing Lindt Teddy product an obvious addition to Lindt's product line of gold-foiled chocolate shapes.

Practical significance

Whether the guidance developed by the Bundesgerichtshof for conflicts between word and device marks (similarity, where the later mark is an ‘obvious, unforced and exhaustive description’ of the earlier mark) may equally be applied to conflicts between word marks and three-dimensional shapes is a crucial one, bearing in mind the impact this can have on search strategies and advice when it comes to clearing any category of (shape) trade mark (or designs) for use and registration in Germany. In its closing remarks the Higher Regional Court of Cologne stated that the question of such a ‘cross collision’ (Überkreuzkollision) of trade marks was indeed of a ‘fundamental nature’. It is now expected that Haribo will appeal the matter to the Bundesgerichtshof, which may in turn even refer the question to the Court of Justice of the European Union for pan-European guidance.