Intellectual property Digest
- Statistics - Community trade marks and designs
- The "Look and Feel" of Copyright Infringement
- Infringement of Performer's Rights
- Cheese Shape Trade Mark Registration
- Artists' Resale Right
- Electronic filing of community trade mark applications
- Can a mark acquire distinctive character?
- Patently Obvious?
- Implementation of EC law and Registered Designs
- Computer Programs - Non-literal Copying
- New .eu Domains
- Company Names and Registered Marks
- Jointly Owned Patents
Statistics - Community trade marks and designs
The OHIM (Office for Harmonisation in the Internal Market) has announced that the number of Community trade mark applications has risen to 58,129. Community trade mark registrations are 34,486 (which is about the same as for 2003). Community design applications rose to 11,476, a thousand more than in 2003 with registered and published community designs increasing three times from the 2003 figure to 57,765. The USA applied for the largest number of community trade mark applications (10,164) and also has the most registered community trade marks (57,691). Second place is Germany with 39,264, the UK (30,027) and then Italy (18,748). Germany tops the charts for community design applications with 10,968, then Italy with 6,770 followed by the USA with 3,548.
For further information on the value of intellectual property protection for your business contact info@dfalaw.co.uk.
The "Look and Feel" of Copyright Infringement
IPC Media Ltd which publishes "IDEAL HOME" claimed that Highbury-SPL Publishing Ltd in its rival magazine "HOME" had partially copied and therefore infringed its artistic copyright in the covers and various internal pages of four of its issues in relation to the design, subject matter, theme and presentational style.
The High Court explained that IPC would have to show what precise copyrighted works it was relying on that had been copied, directly or indirectly by the defendant, or if they had substantially replicated the earliest copyrighted work. In other words, due to the fact that copyright exists in each discrete work, the first step in a copyright action is to identify what work has been copied and then to prove if a substantial proportion of the work has been taken.
The judge said that copying one or two individual features need not amount to the taking of a substantial part of the copyright work as each case will depend on its own facts and a proven design link should be shown between a defendants and claimants works, which does not include general themes, styles or ideas. He used an analogy of Monets "Water lilies" painting. Monet owned the copyright in his own painting but that did not stop anybody else from painting water lilies.
IPC failed to make out its allegation of copying with the judge commenting "how slight, scattered and superficial the alleged similarities are". He went on to say that even if Highbury had been "inspired" by IDEAL HOME in some of its design choices, there would have been too high a level of generality to conclude infringement of copyright.
Want to find out more about copyright? Contact info@dfalaw.co.ukfor further information.
Infringement of Performer's Rights
In a recent case Experience Hendrix LLC applied for summary judgment against Purple Haze Records Ltd for infringement of a performance given in Sweden in 1969 by the late Jimi Hendrix and two other performers, by selling copies of a recording of the performance in the UK. At the time the only recourse a performer had was for criminal sanctions under a series of acts which gave no rights or remedy to the performer. This only came about with the enactment of the Copyright, Designs and Patents Act 1988 which conferred rights retrospectively to performers taking part in "qualifying performances" (i.e. either given by a qualifying individual or taking place in a "qualifying country" - which was defined as including another Member State of the EEC).
The defendants had argued that Sweden was not a qualifying country at the date of the performance, having joined the EC on 1 January 1995, but the High Court held that for the purposes of enforcing performers rights, performances given in a "qualifying" foreign country before the commencement of the Copyright, Designs and Patents Act 1988 could be regarded retrospectively as qualifying performances, and it did not matter whether the country was a "qualifying country" at the commencement of the Act or had joined the EC subsequently.
For details on how to protect your rights as a performer email info@dfalaw.co.uk.
Cheese Shape Trade Mark Registration
Following the Court of Appeals decision to dismiss an appeal against the refusal of a trade mark registration for the shape of a cheese (which consisted of notional lines for cutting wedges of cheese) those who wish to register shape marks continue to have their work cut out for them. A lot will depend upon how distinctive such a shape is perceived to be by the public, whether it will be recognised through the use made of it and the number of traders operating within that field.
We can assist with your trade mark registration needs. Just contact info@dfalaw.co.uk for details.
Artists' Resale Right
In a number of Member States, artists have a right to a percentage payment when their works are resold by professional art dealers. This right lasts as long as the copyright does. An EC Directive requires Member States to comply by 1 January 2006.
The introduction of this right is a controversial matter in the United Kingdom but the Patent Office has consulted on a number of aspects relating to the implementation of the Directive. The responses to the consultation (which closed on 16 May 2005) are awaiting analysis.
For more information on how this might affect your interests as either an artist or an art dealer email info@dfalaw.co.uk.
Electronic filing of community trade mark applications
The OHIM (Office for Harmonisation in the Internal Market) has decided that for an applicant not wishing to claim any special graphic feature or colour, the mark will be known as a "word mark". In all other cases, the graphic representation should be filed as an attachment in .jpeg format. Priority or seniority claims regarding collective marks can also be sent as attachments in either .pdf or .jpeg format. Any attachments that do not conform to these requirements will be deemed not to have been filed.
For assistance with the electronic filing of your applications contact our intellectual property team on info@dfalaw.co.uk.
Can a mark acquire distinctive character?
Nestlé owns both the Kit Kat logo and the slogan "Have a break ... have a Kit Kat". Following the rejection by the UK Patent Office of the Nestlé trade mark "Have a break" after an opposition had been filed by its rival, Mars, the Court of Appeal agreed that "Have a break" lacked distinctive character. It did, however, ask for clarification by the ECJ as to whether a mark can acquire distinctive character "following or in consequence of the use of that mark as part of or in conjunction with another mark".
The ECJ decided that a principal mark that contains a strong distinctive character can bestow a substantial amount of distinctive character to other derivative elements and could potentially acquire distinctiveness as it was quite an important part of the slogan and could trigger a consumer into completing the phrase. The use of such a phrase on its own arising from a reflex reaction, however, was not enough to show distinctive character; it would have to be shown that a consumer would unhesitatingly link the phrase "Have a break" to Nestlé.
Our intellectual property team keeps up to date with essential developements in IP law and procedure in the UK, Europe and worldwide. Contact info@dfalaw.co.uk for assistance with trade marks, patents, copyright and designs.
Patently Obvious?
A recent case concerned a patent for the use of zinc/aluminium alloy in place of zinc as a coating for buried cast-iron pipes. It was accepted that if the patent was valid the defendants would have infringed it. The sole attack on the validity of the patent was that it was obvious following a disclosure in a paper which had been published two months before the patents priority date.
The High Court held that the patent was valid - the use of zinc/aluminium alloy was not obvious over the prior art, even though the use of the alloy for above-ground and marine purposes had been known for many years.
For advice and assistance on key developments in this field email our intellectual property team on info@dfalaw.co.uk.
Implementation of EC law and Registered Designs
In a case involving competitors in the manufacture of sunglasses, Oakley Inc claimed that Animal Ltd had infringed its registered design but as the case proceeded, it argued about a point of law regarding the constitution of the UK and who actually had the power to make the legislation for registered designs.
Oakley had published a design in the UK a month before applying for the registered design right under the Registered Designs Act 1949. The Registered Design Regulations 2001 were introduced in the UK to comply with European Law but they came into effect after the deadline for transposition of the relevant EC Directive into UK law. This left some registered designs in a period of limbo - their validity was governed by the old law when it should have been governed by the new.
When implementing the EC Directive the UK had opted to be governed by the old law of validity in respect of "existing registrations" under regulation 12 of the 2001 Regulations. The High Court held that:
- this was ultra vires because it was implemented by secondary legislation (the 2001 Regulations) rather than primary legislation, after the deadline for transposition of the Directive into national law;
- and regulation 12 could be saved by revising its wording so that the validity of design applications made after the deadline for implementation would be decided under the new law.
Our intellectual property team is fully aware of the importance of European legislation in this area. Contact info@dfalaw.co.uk now for advice on all aspects of intellectual property law and procedure.
Computer Programs - Non-literal Copying
Copyright is recognised internationally as the most appropriate vehicle for the protection of computer programs. Non-literal copying applies where instead of making a duplicate of a computer program, copying the code line by line or by making a duplicate from disk to disk, a new program is written based on the functions, activities or techniques used by or inherent in the first program. Often a different computer programming language is used to write the new program which destroys any possibility of any literal similarity between the two. The commercial goal in non-literal copying is usually to create a new computer program that will be the equivalent of an existing program enabling the copyist to compete in a market established by the owner of the first program. The functionality is likely to be increased in comparison with the first program, it is likely that data files will be compatible with both and the two programs will have a similar "look and feel" and similar user interfaces.
A recent case of real importance to the computer industry in which the impact of the EC Directive on the legal protection of computer programs was addressed, was the case of Navitaire Inc v Easyjet Airline Co. An American software company had provided Easyjet with airline booking software known as OpenRes and Easyjet subsequently employed the second defendant to write replacement software called eRes. The case, which demonstrates how the courts are narrowing the scope of "look and feel" in relation to computer programs, concerned a number of allegations relating to the commands and command sets, screen displays and the "business logic" underlying the claimants computer software.
For advice on essential developments in copyright, licensing and computer software and how they might affect your business email info@dfalaw.co.uk.
New .eu Domains
The domain name .eu will be launched on 7 December 2005. The first phase, operated by EURid, the European Registry of Internet Domain Names, called Sunrise I, will allow public bodies and holders of registered trademarks to register their domain names on 7 December for two months. The second phase, Sunrise II, due to start on 7 February 2006, will run for another two months. From 7 April 2006, called the "Land Rush" period, are open registrations which makes registrations open to everyone.
Domain names are a key business asset: we can advise on protection and infringement issues – contact info@dfalaw.co.uk
Company Names and Registered Marks
In October 2005 the European Court of Justice decided that juxtaposing a company name with a registered mark where the goods or services are identical may cause the likelihood of confusion. A question arose as to whether a component and trade mark, such as ‘LIFE’ (owned by one party in this case), still retained an independent distinctive role when married with a manufacturer’s name such as ‘THOMSON’ (the other party). Would there be a likelihood of confusion and, when assessing an overall impression of a sign, how would it be possible to stop another taking a registered mark and joining it to his company name? The European Court of Justice decided that as the indication of origin of goods was paramount, there could be a possibility that consumers may be led to believe that the goods would be linked economically to Thomson, giving rise to a likelihood of confusion, where an earlier registered mark used by a third party in a composite sign still retained an independent distinctive role.
Protection of brand names is a key issue – consult info@dfalaw.co.uk before, during and after deciding a brand name so we can ensure it does not infringe anyone’s rights and can protect it properly from other’s infringements.
Jointly Owned Patents
Where a patent is jointly owned, the consent of all co-proprietors is required for the grant of a licence under the patent, an assignment or mortgage or a share in the patent. The same now applies in respect of amending the specification of a patent. However, if there is a blockage in exploitation of the patent because one party refuses to grant a licence, the Comptroller can now intervene.
Exploitation of licences on patents or other IP assets requires advice to make sure that such situations do not arise. We can help – contact info@dfalaw.co.uk.
Call us now on 01604 609560 for more information
or email us at info@dfalaw.co.uk
