Tuesday, 1 September 2015

Enforcement of IP Rights: our next JIPLP-GRUR London seminar

Here's a final reminder about our forthcoming Big Event next week.  If you have not yet registered but intend to, please do so by not later than Friday 4 September.  If you have already registered but will be unable to attend, please let us know so that your place can be allocated to someone else.

In a harmonised Europe, IP enforcement depends more
on consistency in the application of rights and remedies
than in the character and attributes of the enforcers ...
This year's JIPLP-GRUR Int London seminar takes place next week on Tuesday 8 September.  The subject is the impact of the EU's Intellectual Property Enforcement Directive (Directive 2004/48) on national litigation. The venue is the London office of law firm Taylor Wessing LLP (here).

The two speakers are London-based barrister Michael Edenborough QC (Serle Court) and Hamburg-based lawyer Wiebke Baars (Taylor Wessing), with JIPLP editor Jeremy Phillips in the chair.  A panel discussion will take place following the presentation of the two papers, led by Anna Carboni (partner, Redd solicitors and, until recently, an Appointed Person to hear trade mark appeals), Paul Stevens (Olswang CEO and former head of litigation, Olswang LLP) and Mark Owen (Taylor Wessing).  Anna and Paul are both members of the JIPLP editorial board. The panel-led discussion will be followed by questions and comments from the floor and a reception.

Registration commences at 2.30 pm for a 3.00 pm start. The formal proceedings should be concluded by 6 pm and the reception will finish by 7 pm. Admission is free.

If you'd like to attend, please email Jeremy Phillips at jjip@btinternet.com with the subject line "Enforcement".

Wednesday, 26 August 2015

More books in search of a review

JIPLP has received four 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 Wednesday 2 September.

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 -- but if you don't review it in a timely manner, we ask for it back so that it can be reviewed by someone else.

These are the books:

Title: Managing the Legal Nexus Between IP and Employees: Domestic and Global Contexts
Editors: L Oswald and M Pagnattaro
Publisher: Edward Elgar Publishing
The explosion in intellectual capital coincides with a growing understanding of the importance of human capital to the firm. This book examines the pressing legal issues that arise at the intersections of intellectual property law, employment law, and global trade, such as the use of employment contracts to protect intellectual property, ownership of intellectual property created by the employee, officer liability issues relating to infringement, post-employment confidentiality and non-compete agreements, and inadvertent or deliberate misappropriation or theft of trade secrets.
Further details are available from the book's web page here.


Title: A User’s Guide to Trade Marks and Passing Off (4th edition)
Authors: N Caddick QC and B Longstaff
Publisher: Bloomsbury
... [F]ocuses on the current law relating to the protection of registered trademarks and certain related rights. This includes registered trade marks, well-known trade marks, certification marks, collective marks, protested geographical origin indicators, international conventions, and Passing off.

There is clear explanation of the underlying principles and concepts with a breakdown of procedural matters, thereby helping to tie the different areas together.
Further details are available from the book's web page here.


Title: International Handbook of Social Media Laws
Author: P Lambert
Publisher: Bloomsbury
[This] is the only title currently available to address social networking laws at an international level. It clearly explains each of the main legal issues and developments across various legal jurisdictions to ensure that a company's social media presence can be fully compliant with the law of each country.

It covers all aspects of the law from a UK and international perspective by offering country report chapters that highlight the legal issues, cases and rules in each jurisdiction.
Further details are available from the book's web page here.


Title: IP and Genetically Modified Organisms: A Convergence in Laws
Editors: C Lawson and B Charnley (eds)
Publisher: Ashgate
Taking a global viewpoint, this volume addresses issues arising from recent developments in the enduring and topical debates over Genetically Modified Organisms (GMOs) and their relationship to Intellectual Property (IP).

The work examines changing responses to the growing acceptance and prevalence of GMOs. Drawing together perspectives from several of the leading international scholars in this area, the contributions seek to break away from analysis of safety and regulation and examine the diversity of ways the law and GMOs have become entangled.

This collection presents the start of a much broader engagement with GMOs and law. As GMO technology becomes increasingly more complex and embedded in our lives, this volume will be a useful resource in leading further discussion and debate about GMOs in academia, in government and among those working on future policy.
Further details are available from the book's web page here.

Tuesday, 25 August 2015

Custom in the UK is required to sustain a passing off case

Author: Giles Parsons (Browne Jacobson LLP)

Starbucks (HK) Limited and Another v British Sky Broadcasting Group PLC and others [2015] UKSC 31 (13 May 2015)

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv132, first published online: August 20, 2015

The United Kingdom Supreme Court has unanimously held that a claimant in a passing off action must have a business with customers within the jurisdiction.

Legal context

The ‘classical trinity’ of elements that a claimant must demonstrate to succeed in a passing off action were set out by Lord Oliver in the Jif Lemon case, Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491: goodwill attached to the claimant's goods or services; a misrepresentation by the defendant that his goods or services are the claimant's goods or services; and finally, damage to the claimant caused by the misrepresentation.

Goodwill is, according to Lord Macnaghten in Commissioners of Inland Revenue v Muller & Co's Margarine Ltd [1901] AC 217, the ‘attractive force which brings in custom’, but the courts in England and Wales also draw a technical distinction between ‘goodwill’ and ‘mere reputation’. Goodwill does not exist in a jurisdiction unless there has been business carried on in that jurisdiction (Anheuser-Busch Inc v Budejovicky Budvar N.P [1984] FSR 413).

However, different approaches have been taken in other common law jurisdictions.

The leading example of this is ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 106 ALR 465, in which the Federal Court of Australia held that, as we now live in a modern world with mass advertising and international commerce,
It is not necessary in Australia that a plaintiff, in order to maintain a passing off action, must have a place of business or a business presence in Australia; nor is it necessary that his goods are sold here. It is sufficient if his goods have a reputation in this country among persons here, whether residents or otherwise, of a sufficient degree to establish that there is a likelihood of deception among consumers and potential consumers and of damage to his reputation.
In that case, the plaintiff failed to demonstrate sufficient reputation in Australia in ‘Healthy Choice’.

ConAgra was cited with approval by the Supreme Court of Appeal of South Africa in Caterham Car Sales and Coachworks Ltd. v Birkin Cars (Pty) Ltd and Another (393/95) [1998] ZASCA 44. In their judgment, the Supreme Court of Appeal said that the correct question to ask was
whether the plaintiff has, in a practical and business sense, a sufficient reputation amongst a substantial number of persons who are either clients or potential clients of his business.
The Supreme Court of Appeal held that extent and locality of the business are still however relevant, as they can determine the scope of the reputation, whether any harm takes place; and as in ConAgra, the plaintiff failed to establish the necessary reputation to found the case.

In Starbucks v British Sky Broadcasting the Supreme Court considered the conflicting jurisprudence, but came to reaffirm the traditional English approach, which requires customers within the jurisdiction.


The claimants, a Hong Kong-based media group, provided internet protocol television (IPTV) under the names NOW BROADBAND TV and NOW TV. The set-top service was provided in Hong Kong, where it was very popular; in the UK, it was only accessible through YouTube, through the claimants' website and as part of in-flight entertainment.

The claimants had planned to launch in the UK, but were pre-empted by Sky's own NOW TV service. The claimants launched proceedings for trade mark infringement and passing off, which failed in the High Court and the Court of Appeal. The passing off aspect was appealed to the Supreme Court on the basis that the claimants' reputation in the UK was sufficient foundation for a claim in passing off.


Lord Neuberger acknowledged the acute significance of this issue in an ‘age of global electronic communication’, and emphasized that ‘it is one of the great virtues of the common law that it can adapt itself to practical and commercial realities’. However, he thought that there was no clear trend away from the ‘hard line’ approach taken in previous English decisions, and emphasized that the law had to balance the competing interests of free competition and unfair competition. Lord Neuberger explained that a claimant who had
simply obtained a reputation for its mark in this jurisdiction in respect of his products or services outside the jurisdiction has not done enough to not justify granting him an effective monopoly in respect of that mark within the jurisdiction.
Part of the foundation for this appears to come from the decision in Maxwell v Hogg (1867) LR 2 Ch 307, in which Turner LJ had said that merely advertising without having commenced selling a product meant that the plaintiff had not provided ‘consideration’ for the ‘monopoly’. It is interesting to see this cited, as the notion of ‘consideration’ had previously been considered irrelevant in passing off; in the fourth edition of his textbook Passing Off: Unfair Competition by Misrepresentation (2011), Professor Wadlow states at paragraph 3-066 that ‘no such concept is relevant in passing off or trade mark law, and Maxwell v Hogg appears to be the only case in which it has been advanced’.

Lord Neuberger also found support for his decision in section 56 of the Trade Marks Act 1994. Section 56 protects well-known trade marks that belong to proprietors that are nationals of countries (other than the UK) which have signed the Paris Convention, and allows such proprietors to obtain an injunction against use in the UK of an identical or similar mark for identical or similar services where the use is likely to cause confusion. Although Lord Neuberger chose not to rule on the point, he saw ‘considerable force’ in the argument that, as Parliament had legislated to protect well-known marks in this way, it was not for the courts to extend the principle to marks which are not well known.

The Supreme Court also chose not to rule on whether a business which has not commenced trading but had launched a substantial advertising campaign could bring a claim in passing off. There is case law in Singapore and in England and Wales which supports the view that such activities could be the foundation of a claim in passing off, but to device that would involve overruling Maxwell v Hogg, and Lord Neuberger refrained from deciding the point.

Practical significance

The Supreme Court's decision is a clear affirmation that to maintain a passing off action in England and Wales one must have a business with customers within the jurisdiction.

This action as a whole has shown how difficult it is to enforce a brand that has little inherent distinctiveness, particularly when no trade has taken place within Europe or the UK.

Where possible, brand owners should choose a brand which is distinctive. Where there is little inherent distinctiveness, developing distinctiveness is vital.

Unless a company can show that it has a mark that is well known in the UK, or that it has business with customers in the UK, it will not have enforceable rights in the absence of a valid registered trade mark.

Monday, 24 August 2015

Here's the new team to steer JIPLP

At the end of November 2015 Jeremy Phillips steps down as Editor of the Journal of Intellectual Property Law & Practice (JIPLP), the journal of which he was the founding editor at its launch exactly ten years earlier.  Jeremy's responsibilities as Editor will be taken over by a fresh, new panel of three editors, all of whom are currently members of the JIPLP Editorial Board. They are (in alphabetical order):
Stefano Barazza

A lecturer in the Faculty of Business and Society, the University of South Wales, Stefano also provides training for the United Kingdom Intellectual Property Office. An Italian-qualified avvocato, Stefano formerly ran his own practice in Udine. A frequent contributor to JIPLP, Stefano, who has also contributed to the IPKat and PatLit weblogs, is particularly interested in patent and trade mark rights.

Eleonora Rosati

Currently Deputy Editor of JIPLP, copyright specialist Eleonora holds a doctorate from the European University Institute, Florence. Well known as a regular member of the IPKat weblog team, she is an Italian-qualified avvocato who practised in the Milan office of Bird & Bird. Eleonora lectures in intellectual property law at the University of Southampton and runs the e-LAWnora consultancy. A regular contributor to the journal, her next article, "Are national courts the addressees of the InfoSoc three-step test?", is co-authored with Sir Richard Arnold.

Marius Schneider

An attorney before the Brussels and Mauritius Bars, Marius heads the IP boutique firm IPvocate, the IP department of Belgian law firm CEW & Partners. An experienced IP litigator, Marius is a member of the EU Observatory on Infringements of Intellectual Property Rights and the immediate past chairman of the European Communities Trade Mark Association Anti-Counterfeiting Committee. Marius is co-editor of Enforcement of Intellectual Property Rights through Border Measures - Law and Practice (Oxford University Press). Marius has already masterminded some JIPLP special issues.
In addition, with the journal continuing to grow in readership and momentum, Sarah Harris (currently the journal's Content Commissioning Editor) is stepping up to shoulder the burden of further editorial and administrative responsibilities. Legally-educated Sarah, who holds an LLM from the University of London, has a vast experience of publishing, both within intellectual property law and beyond it and has been with JIPLP since its inception.

As outgoing Editor, Jeremy wishes his successor team the very greatest of success in continuing JIPLP's adventure in intellectual property publishing, in maintaining its relevance and topicality and in nurturing its unique presence on the social media. He has every confidence that they will improve the journal's breadth of vision and urges everyone to give them their fullest support.

There are a couple of new Editorial Board appointees too. This blog will be announcing them in the course of this week.

The informed user's perception and a design's individual character

Author: Valentina Torelli (Salvador Ferrandis & Partners, Madrid)

Senz Technologies BV v OHIM, Impliva B (Parapluies), Joined Cases T-22/13 and T-23/13, EU: EU:T:2015:310 General Court of the European Union, 21 May 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv136, first published online: August 20, 2015

In a scenario in which the freedom of the designer is limited and the informed user shows a higher level of attention when wishing to buy an umbrella, the General Court held that Senz's highly wind-resistant umbrellas had individual character and deserved to be registered notwithstanding a challenge from invalidity applicant Implivia. That was so even though it had been recognized that some prior art existed in the form of an US earlier patent, but that earlier design of an umbrella produced a different overall impression on the informed user.

Legal context

Article 6(1) of Regulation 6/2002 (the Community Design Regulation) sets out one of the two requirements to afford protection to designs in the EU by defining when a Community design has individual character. This occurs when the Community design produces a different overall impression on the informed user from that conceived by any design which has been made available to the public before either the date of application for registration or of priority of the registered Community design or, where the latter is an unregistered design, before the date it has been disclosed to the public.

Article 7(1) of Regulation 6/2002 provides that a design has been made available to the public for the purposes of assessing a Community design's novelty and individual character if it has been published, exhibited, used in trade or otherwise brought to the public before either the date of application for registration or of priority of the registered Community design or before the unregistered Community design has been disclosed in the EU. There are two exceptions to this rule: first, no account is taken of a disclosure when the design cannot be reasonably known in the normal course of business within the circles specialized in the relevant sector in the EU; secondly, a disclosure does not count when it has been made under an explicit or implicit obligation of confidentiality.

Finally, Article 52 in combination with Article 25 of Regulation 6/2002 grants any natural or legal person the right to apply for the invalidity of a Community design when it does not comply with the legal requirements established in Articles 4 to 9 of the Community Design Regulation, among others when it lacks individual character.


In 2006 Senz applied to register two Community designs for highly wind-resistant umbrellas, featuring respectively a black and a brown asymmetrical canopy with a beak-like shape and an off-centre shaft in respect of the canopy.

In 2009 Impliva sought to invalidate both of Senz's designs before the Office for Harmonisation in the Internal Market (OHIM) on the basis that they did not meet the legal requirements for registration under Articles 4 to 9 of Regulation 6/2002. In particular Impliva claimed that the contested designs produced the same overall impression on the relevant informed user as that characterizing identical or similar umbrellas, among others, the asymmetrical umbrella covered by US patent No. 5505221, registered on 9 April 1996.

Both the Cancellation Division and the Board of Appeal upheld the invalidity claims, holding that the contested designs did not have individual character. In particular, the Board of Appeal stated that, insofar as in the US designs are known as ‘design patents’ and the USPTO register is one of the most important IP registers in the world, the earlier US patent covering an umbrella similar to those of Senz should have been known within the circles specialized in the EU umbrella sector.

As to the assessment of the individual character of Senz's designs, the Board of Appeal started from the premise that the freedom of the designer was limited. It added that the informed user was deemed to be any person willing to buy an umbrella and showing a relatively high level of attention, especially in respect of the umbrella's basic structure. Therefore, the Board of Appeal concluded, all the designs at issue produced the same overall impression, whether from the perspective of the lateral or the underneath view of the umbrellas: all designs had asymmetrical and beak-like canopies and their distribution of the ribs and proportions of the canopies were similar.

In the joined appeals to the General Court, Senz relied on two pleas in law. First, it contested that the US patent could serve as prior art in the assessment of validity, alleging misapplication of Article 7(1) of Regulation 6/2002. Secondly, it argued that the Board of Appeal misapplied Article 6(1) of Regulation 6/2002, in that its umbrella designs had individual character.


The General Court sided with the Board of Appeal in the evaluation of the US patent no. 5505221 as prior art of Senz's Community designs, confirming its interpretation of Article 7(1) of Regulation 6/2002.

The court started from the premise that the earlier patent protected both the asymmetrical umbrella's technicalities and its appearance deriving from its various features. On this basis some prior art was disclosed before the filing of the contested designs, in that the USPTO Register was a reliable source for the specialized circles in the umbrella sector to search for possible earlier conflicting rights. That was even more so, said the court, since in this case the design proprietor was a designer of a wind-resistant umbrella which needed to meet specific technical requirements.

Moreover, Senz failed to substantiate its claim properly. It did not provide evidence that European IP lawyers would disregard the fact that, in the United States, designs are protected in the patent register and that patent searches in that register would not be financially sustainable for individual designer and small companies. In any event, Senz failed to prove that the European umbrella sector was composed of such operators.

Finally, the General Court took the view that, contrary to what Senz argued, although the earlier patent had never been incorporated in a product which was actually marketed, knowledge of the patent could have been obtained within the circles specialized in the umbrella sector by means of online searches in the USPTO Register. This conclusion was even reinforced by the circumstance that the United States is an influencing commercial partner for EU specialized operators of the relevant sector.

Notwithstanding all the above, Senz succeeded in relation to its second plea in law and the General Court annulled the Board of Appeal's decisions while affirming that the two contested designs had individual character according to Article 6(1) of Regulation 6/2002.

The court agreed with the Board of Appeal on the definition of the informed user and on the fact that the freedom of the designer was limited. However, it considered that the three designs of asymmetrical umbrellas produced different overall impressions, especially due to the shape of the umbrellas' canopies.

While Senz's designs were characterized by pyramidal and quasi-pyramidal canopies with bent lateral contours forming an irregular octagon, the earlier patent featured a flat surface in the middle and curved lateral contours forming a regular octagon. Although all designs concerned umbrellas' asymmetrical and unusual shapes, the informed user may still be able to perceive the differences between them. Indeed, the informed user may be deemed to recognize their variations despite the fact that all designs shared the same characteristic.

The court then found that the off-centre shaft was not the dominant feature of all the conflicting designs and that it could not have any bearing in establishing that the designs created different overall impressions. Additionally, the perception of the umbrellas from the underneath perspective should not be taken into account, in that design rights protect the appearance of a product as it has been represented in the design, not those perspectives which have not been included in it.

Finally, the court rejected the argument that, inasmuch as the canopies' shapes had been dictated by technical constraints in order to provide the umbrellas with an aerodynamic structure, they were to be disregarded in the comparison of the overall impression. When the appearance of a product is also aimed at fulfilling a technical function it can be nonetheless afforded protection under Regulation 6/2002.

Practical significance

The General Court explained here how the assessment of a design's individual character must be undertaken. What is relevant an identification of the design's features which determine the overall impression capable of influencing the informed user's perception. It follows that, for the purposes of establishing the design's individual character, the comparison between similar designs must entail solely those parts which constitute the appearance of the product as resulting from the design's representation. It therefore cannot be argued that the new and unusual features of a design can be used to prohibit competitors to develop further versions of those features which show significant differences, as in the present case. In such a situation, the General Court clarified that the saturation of the state of the art cannot serve to deny that the informed user can recognize the differences of the conflicting designs insofar as they share a single characteristic feature.

© The Author (2015). Published by Oxford University Press. All rights reserved.