Tuesday, 26 May 2015

Books for review -- and a couple of films

JIPLP has received two more books for review. If you are interested in reviewing one of them, please email Sarah Harris at sarah.harris@oup.com and tell her of your interest, ideally by close of play on Friday 29 May. If you are not yet known to JIPLP as a contributor or reviewer, do send us your CV or tell us why you think you are the right person to review the book you are are requesting. Don't forget: if you review the book, you get to keep it. These are the books:

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Title: Intellectual Property And General Legal Principles: Is IP a Lex Specialis?
Editor: Graeme B. Dinwoodie (Professor of Intellectual Property and Information Technology Law, University of Oxford)
Publisher: Edward Elgar Publishing
The rule of lex specialis serves as an interpretative method to determine which of two contesting norms should be used to govern. In this book, the lex specialis label is broadly applied to intellectual property and connects a series of questions: What is the scope of intellectual property law? What is the relationship between intellectual property law and general legal principles? To what extent are intellectual property laws exceptional?
Further information concerning this title can be accessed from the publisher's web page for it here

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Title: The SAGE Handbook of Intellectual Property

Editors: Matthew David (Durham University, UK) and Debora Halbert (University of Hawaii at Manoa)
Publisher: SAGE
This Handbook brings together scholars from around the world in addressing the global significance of, controversies over and alternatives to intellectual property (IP) today. It brings together over fifty of the leading authors in this field across the spectrum of academic disciplines, from law, economics, geography, sociology, politics and anthropology. 
This volume addresses the full spectrum of IP issues including copyright, patent, trademarks and trade secrets, as well as parallel rights and novel applications. In addition to addressing the role of IP in an increasingly information based and globalized economy and culture, it also challenges the utility and viability of IP today and addresses a range of alternative futures
Further information concerning this title can be accessed from the publisher's web page for it here.

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JIPLP is also seeking reviewers for a couple of controversial films:
Fire in the Blood (details here
Google and the World Brain (details here)
The reviewer will be able to view the film through Vimeo streaming, the access details for which will be provided by JIPLP.

If you believe that you are suitably qualified to review the film in question, please email Sarah Harris at sarah.harris@oup.com and tell her why, again by Friday 29 May if possible.

Tuesday, 19 May 2015

The EU General Court provides guidance on own name, unfair advantage and late evidence in trade mark proceedings

Author: Kirsten Toft (Virtuoso Legal, Leeds, UK)

Kenzo Tsujimoto v OHIM, Case T-393/12, 22 January 2015 (unreported)

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv085, first published online: May 15, 2015

Upholding a decision of OHIM's Board of Appeal, the EU General Court has found that Mr Tsujimoto's wish to register his first name, Kenzo, as a Community trade mark (CTM) was ‘without due cause’ and therefore took unfair advantage of the eponymous mark of luxury fashion brand Kenzo within the meaning of Article 8(5) of the Community Trade Mark Regulation 207/2009.

Legal context

Kenzo Tsujimoto, owner of US-based Napa Valley winery Kenzo Estate (makers of, among others, the Asatsuyu Sauvignon Blanc), applied in November 2009 to register the word mark KENZO as a Community trade mark (CTM) for ‘Wine; alcoholic beverages of fruit; western liquors (in general)’ in class 33. In June 2010, luxury French fashion brand Kenzo, founded by the notable Japanese designer Kenzo Takada and owned by the LVMH luxury fashion conglomerate, opposed the application on the basis of Article 8(5) of the Community Trade Mark Regulation 207/2009 (‘the Regulation’), citing its earlier Community word mark KENZO covering cosmetics in class 3, leather goods in class 18 and clothing in class 25.

The Office for Harmonisation in the Internal Market's (OHIM's) Opposition Division rejected the opposition, but that decision was reversed by the Second Board of Appeal. Mr Tsujimoto appealed to the General Court.

Facts

Mr Tsujimoto argued that, in failing to address his argument concerning his wish to use his forename, Kenzo, for a certain range of goods, the Board of Appeal had breached its duty to provide a statement of reasons under Article 75 of the Regulation. The General Court disagreed. Although Article 75 required OHIM to state reasons on which its decisions were based, there was no obligation ‘to take a position on all the arguments relied on by the parties before them’, and presenting ‘the facts and legal considerations having decisive importance in the context of the decision’ was sufficient (see Matratzen Concord v OHIM—Barranco Schnitzler, T-351/08, ECLI:EU:T:2010:263). Accordingly, the Board of Appeal's response that ‘no due cause [had] been demonstrated’, albeit short, was nevertheless adequate.

Observing that the Regulation did not confer an unconditional right to register a forename or a surname (see Prinz von Hannover v OHIM, T-397/09, ECLI:EU:T:2011:246), the court concluded that there was no due cause under Article 8(5) based on the fact that Mr Tsujimoto's first name was Kenzo.

Mr Tsujimoto also argued that the Board of Appeal had infringed Article 76(2) of the Regulation by considering evidence produced by Kenzo after 18 May 2012, the Opposition Division's deadline. Once again the General Court disagreed. The court stated that Article 76(2) had to be read in the light of Rule 50(1) of the Implementing Regulation (2868/95) and not, as Mr Tsujimoto contended, Rule 20(1). Following Rintisch (C-120/12 P, ECLI:EU:C:2013:638), the court clarified that the third subparagraph of Rule 50(1) expressly provided that, when examining an appeal of an Opposition Division decision, the Board of Appeal enjoyed the discretion conferred under Article 76(2) to decide whether it was appropriate to consider ‘additional or supplementary facts and evidence not submitted within the periods prescribed or specified by the Opposition Division’. The court also clarified that, as in Rintisch, when OHIM adjudicated in the context of opposition proceedings, accepting late factual or evidentiary submissions was likely to be justified where OHIM considered, first, that the late submission was, on the face of it, ‘genuinely relevant to the outcome’ and, secondly, that ‘the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters from being taken into account’.

In the court's view, Kenzo's late evidence was genuinely relevant. The court observed that the Board of Appeal had found that this evidence, even though it was submitted by Kenzo primarily to establish use of its earlier mark, provided supplementary evidence of that mark's reputation as use of a trade mark is a relevant factor in assessing reputation, and also confirmed the evidence on reputation submitted by Kenzo before the deadline. The court also found that, among other things, the evidence in question had been submitted before the Opposition Division reached its decision and before proceedings were begun in the Board of Appeal, meaning that the evidence was not submitted at a late stage in the proceedings as Mr Tsujimoto contended. All in all, the Board of Appeal had not infringed Article 76(2) by taking into account the evidence submitted after the deadline.

As regards Article 8(5), the court found that, first, Kenzo's earlier trade mark had a reputation based on Kenzo's evidence submitted before and, as just held, after the deadline. In particular, the evidence submitted ahead of the deadline included 400 pages on Kenzo's global advertising campaigns for its mark, covering several EU States, between 2000 and 2010, and a monograph on Kenzo Takada which, as Kenzo pointed out, was in the same series of monographs dedicated to other legendary fashion figures such as Chanel, Versace and Valentino.

Secondly, contrary to Mr Tsujimoto's view, there was a risk of an unfair advantage. Both of the marks were identical, and the earlier trade mark was inherently distinctive and had a substantial reputation. The court stated that the Board had correctly inferred that, since Kenzo's goods were at ‘the high end of the market’ for a consumer with ‘more sophisticated taste than the average consumer’ and the mark applied for by Mr Tsujimoto ‘included high-quality wines and cognac intended for equally sophisticated consumers’, a link between those goods could be established since they all ‘projected images of luxury, glamour, good taste, and social status’. Moreover, Kenzo's earlier trade mark, as the Board of Appeal found, had ‘undisputable allure’ which could readily be transferable to other luxury goods including cognac, champagne or wine. Finally, as established earlier, there was no due cause. For these reasons, the General Court dismissed Mr Tsujimoto's appeal.

Analysis

As far as the General Court is concerned, there is only room for one Kenzo in the luxury brand market. EU trade mark law does provide an ‘own name’ defence to infringement (see Article 12 of the Regulation) but, as the General Court pointed out, there is no unconditional right to register one's own name as a CTM pursuant to the Regulation.

Practical significance

The practical issue for Mr Tsujimoto is whether this decision affects his ability to trade in the EU at all under the ‘Kenzo’ name, assuming that his plan is to extend distribution of his, by all accounts, very expensive Californian wine. In Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159, Jacob LJ referred to Gerolsteiner Brunnen v Putsch (C-100/02, ECLI:EU:C:2004:11) in concluding that a man may use his own name even if there is some actual confusion with a registered trade mark, albeit that the amount of confusion which could be tolerated was a question of degree. Gerolsteiner, a much criticised decision on honest use, may not help Mr Tsujimoto when it comes to Article 8(5) and unfair advantage, however, particularly as the General Court here acknowledged that Kenzo's ‘undisputable allure’ could readily be transferable to wine.

Following Rintisch v OHIM, this case also provides useful guidance on the admissibility of late evidence in the context of OHIM opposition proceedings.

Friday, 15 May 2015

Congratulations, Paul!

JIPLP is pleased to announce that Editorial Board member Paul Stevens has just been elected by the partnership of Olswang LLP as the firm’s new CEO. Paul joined Olswang in 1997 and, before his elevation to CEO, was Head of the firm's 135-strong International Intellectual Property Group.

Apart from serving on the Editorial Board and peer-reviewing for JIPLP, Paul has written a Guest Editorial, "Should we all be just a bit more American?" (March 2013, here), as well as a Current Intelligence note ("A hyperlink can be both a permissible and an infringing act at the same time", June 2014, here).

Advance access: how you can read JIPLP content before it's conventionally published

While we at JIPLP are all very excited at the fact that the June 2015 issue has been available online in full since 14 May, we are also excited about the progress of the journal's Advance Access facility -- which currently carries the full text of some 25 articles, current intelligence notes and reviews, all of which will be published in print form in the coming months. Since many subscribers are unaware of this service, a few words of explanation may be worthwhile.

In short, Advance Access articles are papers that have been copy-edited and typeset but not yet paginated for inclusion in an issue of the journal. According to Oxford University Press's Advance Access page:

What is Advance Access?

Advance Access enables us to publish papers online soon after they have been accepted for publication and well ahead of their appearance in the printed journal, thus greatly reducing publication times.
New papers are put into Advance Access at regular intervals and are then taken off the Advance Access page once they have been copyedited, formatted, and paginated, at which point the issue into which they are incorporated will be posted online. It is therefore possible for the Advance Access page to be empty if all the available papers have just been incorporated into an issue.
Advance Access versions of papers that have been incorporated into issues will continue to be available online via the paper's Abstract or Full Text pages.
Advance Access papers are fully integrated into the journal's online system. Abstracts and titles are searchable and accessible within the journal's web pages, the entire HighWire archive, and PubMed.

When does a paper count as published?

Appearance in Advance Access constitutes publication and establishes publication precedence. The official publication date appears beneath the title of each article just before its Digital Object Identifier (DOI).

What is a 'DOI'?

A 'Digital Object Identifier' is an automatically generated unique identifier for intellectual property in the digital environment ('10.1093/molbev/msg085' is an example of a DOI). The DOI is attached to the item once it is accepted for publication and remains the same even if different versions of recognisably the same item appear successively. It appears on every version of the manuscript, including the final versions in print and online, and reprints. DOIs facilitate online searches for particular papers.

How do I cite papers that appear in Advance Access?

Papers published in Advance Access are citeable using the DOI and publication date. ...
All of this goes to show that JIPLP and its publishers are determined to bring content before its target readership at the earliest opportunity.

Thursday, 14 May 2015

If it ain't broke don't fix it?

This is the Guest Editorial of the June 2015 issue of JIPLP. The author is long-time Editorial Board member Gill Grassie (Brodies).
If it ain't broke don't fix it?

Brands and trade marks can spark passionate emotions in both their owners and consumers. However, both groups have different, and sometimes conflicting, reasons for their strength of feeling, fuelling debate in the context of the ongoing comprehensive review of the EU trade mark system.

Brands are big business. According to the 9th annual edition of Millward Brown's Brandz Top 100, Most Valuable Global Brands 2014, the combined value of the world's most important brands is US$2.9 trillion. Businesses, investing vast amounts in developing and maintaining their brand strategies and protection programmes, are passionate about protecting their trade marks and growing brand value. It is little wonder then that they wish to increase legal protection for trade marks and keep fair user-type defences to a minimum.

In the consumer camp, meanwhile, brands can inspire loyalty, assist in making choices and create a sense of belonging. Is there a need then to better protect the rights of consumers to make free use of registered trade marks in certain circumstances?

The current EU regime around protection of brands and trade marks has not changed significantly since the initial EU Council Directive in 1988 and the Regulation in 1995. Since then the internet and social media have revolutionised the way we interact with brands and purchase products. In consequence, the Commission is conducting a review that aims to modernise the trade mark system in Europe at both EU and national level, re-examining the scope of the defences or exceptions to trade mark infringement.

The review prompted 38 academics to publish last September their ‘Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU trade mark law’. They argue that the limitations should be broadened, there being a need to protect fundamental freedoms and certain free uses such as for political and artistic purposes, including criticism, comment and parody, and reporting current events. More controversially, the Recommendation proposes to empower the courts to develop new defences on a case-by-case basis, with no restriction to non-commercial use.

The other side of the debate is encapsulated in an open letter from several trade mark owner associations to the European Parliament Member States Commission, warning against expansion of the exceptions and, specifically, against introducing an exception for parodies and trade marks: such use is only acceptable where the aim is one of “legitimate general interest and not just malice”, while use for commercial benefit should not be allowed.

The current regime already recognises the need for commercial use in ‘use in the course of trade’ for infringement to occur, as well as a lack of honest practices. To the extent that parody, comment etc need to be legitimised, the law already allows these types of uses where there is no confusion as to origin and no commercial use. If trade mark owners believe that such use goes too far, then they can seek redress under the law of defamation.

Article 10 of the European Convention of Human Rights, which guarantees freedom of expression in all forms, including political and artistic, may be invoked in defence to allegations of infringement. Protection thus already exists for the public interest-type use of brands at a number of levels. Arguably these protections are tested regularly in the social media, where the public frequently make their views heard on particular brands with no apparent fear of being sued for trade mark infringement. Social media have also influenced the way brand owners deal with trade mark disputes, often choosing a more gentle approach for fear of a social media backlash that severely damages a brand or customer loyalty.

This begs the question: “Is the status quo preferable to introducing a raft of new exceptions to trade mark infringement?” The latter risks making a complex but relatively functional legal provisions even more complicated, prompting an onslaught of litigation nationally and before the Court of Justice of the European Union. Another unintended consequence, particularly if an open-ended US style fair use or dealing provision is adopted, could be the introduction of a partial law of unfair competition without any thought to proper harmonisation.

If the aim is to balance the rights of brand owners and consumers, it is perhaps in everyone's best interest to leave things as they are? The relationship between the two groups is symbiotic and control of the brand messaging and power is far from being wholly with the brand owners.
To check the rest of the content of this issue, just click here.