FADE-OUT FALL-OUT FOR RUBETTES; LATEST PCT STATS

Sugar Baby Loves to Litigate

The IPKat, half of whom was thriving during the 1970s, is embarrassed to confess that he has no recollection of a pop group called The Rubettes. This outfit was however the subject of a case noted yesterday by Butterworths' increasingly efficient All England Direct subscription service. The case is Alan Williams Entertainment Ltd and another v Hurd and others [2006] EWHC 81 (Ch), a Chancery Division decision of Mr Justice David Richards.

Alan Williams Entertainment was owned and controlled by Alan Williams, the former lead vocalist of The Rubettes. In the 1970s The Rubettes notched up a hit single, ‘Sugar Baby Love’, which reached number one in the pop music charts. The first two defendants were ex-members of the band and the third was lead vocalist in the recording of ‘Sugar Baby Love’.

After the band split up in 1999 Williams and his company sued for a declaration that they alone were entitled to use the names ‘Rubettes’ or ‘The Rubettes’ in the course of trade. The proceedings were settled on terms which were appended to a consent order (the agreement). Clause 1 of the settlement agreement provided that there should be two Rubettes bands - one for Williams and one for the defendants. By Clause 5 neither band would trade as ‘Rubettes’ or ‘The Rubettes’ after a certain date.

In this action Wiliams and his company sued, alleging that the defendants were in breach of the settlement agreement. Two issues of construction of Clause 5 arose: (i) the meaning of the expression ‘trade as’ and (ii) whether that clause, in combination with Clause 1, imposed any duty on the parties as regards third party material. The defendants counterclaimed, saying that Williams & Co were also in breach.

David Richards J ruled as follows:

* When considering a compromise agreement such as this, it should be construed as a whole and the meaning of the words should be taken from their context with a view to giving effect - if possible - to the whole of it.

* Words were to be given their plain and natural meaning unless the result was absurd or the agreement was internally inconsistent within itself.

* The ordinary meaning of ‘trade as’ in that context extended beyond the use of ‘The Rubettes’ as the name of the band, to cover any promotion of the band as ‘The Rubettes’.

* The reason why Clause 1 allowed each side to use ‘The Rubettes’ in its name was to allow some trading off that reputation. What was not permitted was trading in such a way as to present or promote themselves as ‘Rubettes’ or ‘The Rubettes’, thereby suggesting that they were the original Rubettes.

* The issue of control of the activities of third parties turned on an understanding of the obligation in Clause 5 not to ‘trade as’ the Rubettes. Promotion of a band was an essential part of its trading activities.

* The agreement could not be construed as imposing a full duty on the parties to stop third parties calling either band the Rubettes. However, Clause 5 covered reasonable steps in advance of any promotion, advertisement or announcement, to prevent their description or promotion as the Rubettes and, where they were being wrongfully described or promoted in that way, to take reasonable steps to correct it.

* It followed from this construction of the agreement that there had been some breaches of it. Accordingly, an inquiry would be ordered as to the damage suffered by each side.

The IPKat feels sorry for any contracting party who doesn't know whether he's in breach of the contract or not until, some years after it has been made, a judge rules on what its obligations actually are. Good, precise drafting, combined with common sense and foresight, is what's needed. Yes, says Merpel, but sometimes the only way you can get the parties to sign a settlement agreement is to keep it vague so that each thinks it means what he wants it to mean.

Listen to Sugar Baby Love here ...
... but don't confuse it with sugar-free Baby Love or (for dyslexics) Baby Vole


As if we didn't know ...

WIPO has issued a press-release on last year's Patent Cooperation Treaty (PCT) filings in which it leads which hard data to support what we all know: North East Asia, once a zone famed for its infringing activities, is in the Big League when it comes to the entirely legitimate pursuit of filing patents for its own innovations. The Press Release, which is full of facts and figures, should make compulsory reading for anyone who wants to know how much the PCT has promoted globalisation of IP protection and use, as well as which countries have been left behind. Among its contents are the following:

"* ... the Republic of Korea overtook the Netherlands as the 6th biggest user of the ... Patent Cooperation Treaty (PCT) and China dislodged Canada, Italy and Australia to take the position of 10th largest PCT user.

* In 2005, over 134,000 PCT applications were filed, ... a 9.4% increase over the previous year. The five top users of the international patent system remained unchanged, namely the USA, Japan, Germany, France and the UK.

* ... for the second year running, the most impressive rates of growth came from north east Asia – namely, Japan, the Republic of Korea and China, which between them accounted for 24.1% of all international applications, compared to 34.6% from the countries party to the European Patent Convention and 33.6% from the USA.

* Since 2000, the number of applications from Japan, Republic of Korea, and China, has risen by 162%, 200% and 212%, respectively.

Right: sometimes the PCT protects patents. Other times it's vice versa ...

* Inventors and industry from the United States of America represented 33.6% (a 3.8% increase over 2004) of all applications in 2005. Applicants from Japan, who unseated their German counterparts in 2003 for the number two spot, maintained their second place position with 18.8% of the total number of applications, representing a 24.3% increase. Germany held third position with 11.8% of all applications in 2005, representing a 4% increase, followed by France (4.1% of all applications and a 6.6% increase) and the UK (3.8% of all applications and a 1.5% increase). Among the fifteen top filing countries, others to achieve double-digit rates of growth were Australia (13th highest filer, with a rate of growth of 10.1% in 2005) and Finland (14th highest filer, with a rate of growth of 11.6% in 2005).

* ... staff of the PCT, which processed an average of 536 international applications per working day. ... Productivity improved by 18% using the measure of the number of international applications processed per employee, which had gone up from 213 per employee, to 253.

* The WIPO website "PatentScope" now made available over 1.2 million international applications ... in fully searchable form for free consultation by all.

* Dutch multinational Philips Electronics was ... the largest filer (an estimated 2,492 applications), followed by Matsushita (Japan) (2,021), Siemens (Germany) (1,402) , Nokia (Finland) (898), Bosch (Germany) (843), Intel (USA) (691), BASF (Germany) (656), 3M (USA) (603), Motorola (United States) (580), and DaimlerChrysler (Germany) (567). Among the 20 top filing companies, seven were from the United States of America, four from Germany and four from Japan.

* International patent applications received from developing countries in 2005 saw a 20% increase ..., representing 6.7% of all international patent applications filed. The list was topped by applications from the Republic of Korea with 4,747 applications, followed by China (2,452), India (648), South Africa (336), Singapore (438), Brazil (283) and Mexico (136)".

The IPKat can't help wondering how much the increased use of the PCT has been helped in recent years by the TRIPs factor. As IP laws around the world become more homogenous, stable and predictable, and as enforcement becomes of a realistic proposition, the expense and effort of international patent filing is easier to justify. Merpel adds, it's not just the number of patents filed that makes a business successful: it's the quality of the innovation protected by them and the skills involved in marketing them. PCT use is only a means to an end, not an end in itself.