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Articles contributed by Field Fisher Waterhouse
THE EUROPEAN COURT OF JUSTICE (ECJ) IS IN THE midst of considering questions referred to it by the UK courts in three separate cases that should clarify the law regarding comparative advertising. This type of advertising, particularly when it identifies a competitor or a competitor’s goods or services by referring to a registered trade mark, is of particular concern to trade mark owners as their competitors normally seek to make unfavourable comparisons with their own goods or services, or to take advantage of being associated with the market leader’s brand.
IN A RULING OF THE COURT OF APPEAL HANDED down on 19 March 2008, recognising the urgent need for reform of the patent litigation system in Europe, Jacob LJ commented:
‘[This case] illustrates yet again the need for a one-stop patent shop (with a ground-floor department for first instance and a first-floor department for second instance) for those who have Europe-wide businesses.'
RECENTLY, IN WILSON v YAHOO! UK LTD & ANOR  (the Mr Spicy case), the UK courts ruled on whether search engines using keyword advertising to produce sponsored results can constitute trade mark infringement. This article reviews this landmark decision and the past UK case law on banner advertisements, and considers what impact these will have on businesses wishing to use keywords as part of their advertising strategy on the internet.
In October 2006, the Companies Act 2006 (the 2006 Act) will add to brand owners’ intellectual property armouries by enabling them to take actions against companies that incorporate names that use their trade mark.
On 8 January 2008 the UK Intellectual Property Office (IPO) announced a consultation aimed at ensuring that the UK’s copyright laws are fit for the digital age. One of the most high-profile of the proposed amendments to the law surrounds the issue of private copying, or so-called ‘formatshifting’. It is often unappreciated by consumers that the practice of copying a CD for use on an iPod or other MP3 player is an infringement of copyright, even though such a practice is widespread.
Lookalikes have been described by the British Brands Group (an organisation that since 1994 has operated as a lobbyist on behalf of brand owners collectively) as products where ‘distinctive features of a brand’s packaging are hijacked in order to trick shoppers into buying something they believe to be that brand, made by the brand manufacturer or sharing the reputation of that brand’. In submissions made by the Group to the Gowers Review (see below) it asserted that lookalike products had caused a 20% decline in sales of branded products, and an increase of 55% in own-label share compared to own-label products in dissimilar packaging.
Advertising and marketing are essential tools for any business in today’s crowded marketplace. The shifting habits of consumers, the advent of new technologies and developments in the law are changing the advertising landscape at an unprecedented rate. Public interest in the impact that advertising has on children and issues surrounding the appropriateness of promoting alcohol and gambling have brought the spotlight firmly on to how these areas are regulated. It is therefore more important than ever to ensure that advertising is legally compliant.
Licensors and franchisors should ensure that they give careful consideration to all the relevant implications of a compulsory rebranding of their licensed/franchised business. It is easy to look solely at the investment cost to the licensor-franchisor and the expected benefits of launching a new product or service. However, difficulties can arise quickly if proper thought is not given to the potential economic impact on licensee-franchisees, as well as the accuracy of any trade mark registration programme implemented to protect the new brand.
The Community trade mark (CTM) has become a useful tool for businesses within the European market. It was created to further the EU ‘single market’ agenda, which aims to implement one procedural system under which uniform protection can be given to trade marks in the Community. Nevertheless, the EU recognises that pre-existing trade marks and earlier rights within EU member states also require protection. The Community Trade Marks Regulation (CTMR)1 provides various mechanisms for owners of these rights to oppose CTMs which would otherwise infringe upon those rights.
Businesses and their professional advisers should exercise caution when writing threatening letters for perceived breaches of their trade mark rights. A badly drafted letter before action can lead to a potential claimant being counter-sued or becoming a defendant in an unjustifiable threats action. The UK threats provisions allow anyone aggrieved by threats of infringement proceedings, even if they are only implied, to bring proceedings against the writer of the letter or other persons making the threat.
The date of filing or deemed filing of a patent application is critical. It establishes the so-called priority date for the patent and it is the state of known technology at that date against which the patent is measured to assess whether it meets the two fundamental requirements of being both novel and inventive. After the application is filed the applicant may wish to amend the application, for example to deal with objections raised by the Patent Office. If the application is amended during the application process, there is a danger that the subsequently granted patent may be invalid on the basis of ‘added subject matter', as Document Security Systems Inc recently found to its cost.
No patent strategy would be complete without some consideration of the US market. Two recent US Supreme Court decisions will have a significant impact upon the patent environment in the US.
A recent survey by the Economist Intelligence Unit has found that knowledge-based companies are increasingly reliant on intellectual property in their business. According to the research, the proportion of those surveyed who said that intellectual property rights (IPR) were critical to their business has increased by 50% over the past two years. Now, more than one-half of all businesses feel that IPR are critical. Businesses, including those in the telecoms sector, are increasingly turning to their IPR to generate revenue. However, just 5% of the income in the telecoms sector derives from IPR, so it still has some way to go to catch up with the life sciences sector, which gets 18% of its income from IPR.
European Companies and voters are told by their governments and the EU that their future prosperity lies in developing technology-driven economies. They are told that these economies rely heavily on intellectual property, and that one of the key manifestations of intellectual property protection is the patent.
There are a number of reasons why it may become necessary for a company to adopt a new name. The most common examples relate to the launch of a new product or service, and the merger of existing organisations resulting in the creation of a new entity. Whatever the commercial imperative behind the decision, it is essential, before the launch of the new mark, that linguistic and cultural checks are carried out to avoid the embarrassment of adopting an inappropriate mark. Skinabebe may have been perfectly acceptable as a name for a topical skin treatment for children in Japan, but is it suitable for the UK?
Counterfeiting costs the global economy more than $100bn (£51bn) every year and puts our health and safety at risk, according to the latest information published by the World Intellectual Property Organisation (WIPO). Counterfeit and pirated goods are sold in almost every country in the world and European Union customs officials estimate that at least two-thirds of the counterfeit goods they seize originate from China. The internet is increasingly being used by those who deal in counterfeit and pirated goods as a fast and effective way of advertising and conducting their business.
The costs of patents in the UK and Europe have recently been receiving much attention, and various proposals have been made for ways to reduce the costs. As reported in the October issue (IHL144, p72) there are a number of, arguably competing, initiatives to reduce the costs of acquiring and enforcing patents in the UK and Europe. Since October there have been a number of developments.
When the consumers of a product do not know, or even care about, its true origin, the law of passing off still protects the originator of the product against any unauthorised exploitation of the goodwill it generates. But what happens to goodwill when the originator expressly allows a third party to rebrand and market its product as its own, under what is known as a ‘white label' arrangement? Is there a limit to the extent that the goodwill can be exploited? The High Court grappled with this issue in the recent case of ScanSafe Ltd v MessageLabs Ltd in the context of internet security services.
The UK system for trade mark registration has always been seen as strong and reliable. However, the perceived value of a UK trade mark registration may not be as high after October 2007.
The cost of obtaining and enforcing patents in Europe is expensive when compared, for example, with the US. Accordingly, there has long been a desire for a single European patent, but enormous difficulties (particularly relating to language) have hindered steps towards such a goal. Things may, however, be changing.
Only a small proportion of patent disputes proceed as far as a court judgment; the vast majority are resolved well before that stage. In cases where the decision is in favour of the patentee, the next stage is to assess the compensation to be paid by the infringer. The successful patentee can choose to recover either the profits made by the infringer (account of profits), or the loss it suffered (damages) as a result of the infringement. If the quantum cannot be agreed, the matter returns to the judge (the damages inquiry).
The recent case of <em>Hughes v Paxman </em>has highlighted the dangers of co-ownership of a patent.
At some stage in the development of every successful business, strategy turns towards expansion. The first option considered is usually corporate growth, making use of the resources within the company to expand. But there are other options, and this briefing explores the potential role that intellectual property can play in providing one such (popular) alternative.
Brands have become key components of corporate value. Protecting them is a sophisticated business, particularly across the US and Europe, which are key markets for their exploitation. Brands are unique in their ability to distinguish one company from the next, even in the most competitive of markets. A successful brand will invariably end up becoming the single most important asset on a company's balance sheet because it encourages repeat sales.
This article discusses the issues raised by the recent BlackBerry patent infringement litigation in the US, the UK and Germany, including: the emergence of patent trolls; the nature of litigation proceedings in the UK; the Gowers Review of IP rights; and, finally, the question of expert witnesses.
Have you lost track of what domain names you own? Have you had problems with crucial domain names being lost to cybersquatters due to a failure to renew the domain? You are not alone. New Top Level Domains (TLDs) are constantly being introduced, and so as a company grows it becomes increasingly hard to maintain control over a domain name portfolio. A first step in the right direction is to create a well-thought-out strategy which should be reassessed regularly. Set out below are some of the most relevant issues that your strategy should contain, a brief update on the latest TLDs you need to consider and an analysis of the remedies available to combat cybersquatting.
A recent judgment in the Patents County Court has provided useful guidance on the duties owed by an employee wishing to set up a business in competition with their employer, and what constitutes ‘surface decoration', a feature that is not protected by unregistered design right.
Andrew Gowers, former editor of the Financial Times, has been commissioned by the Chancellor to lead a review of the UK intellectual property (IP) framework. While the review will no doubt address many topical IP issues, and this article looks at some of them, it can be expected to focus on broader issues, and in particular on the contribution that the IP framework in the UK could make to the future success of the UK in the global knowledge economy. That is no doubt why the Treasury has commissioned the review rather than the DTI or the Patent Office, and why Mr Gowers has been chosen to lead it. The scope for radical change in IP law is, however, limited by the UK’s international obligations.