Latest Trademark World; Phil(l)ips rides again
Latest Trademark WorldThe IPKat has been browsing through the offerings contained in the December 2006/January 2007 issue of that handsome near-monthly from Informa, Trademark World. And what did he find there? Georgina Hey (Freehills, Sydney) writes on the recent Australian Woolworths v BP dispute over a particularly unappealing shade of green (blogged here, via Duncan Bucknell); the IPKat's friend Thomas Hays (confusingly similar to Hey, don't you think?) explains the limitations of the allegedly pro-parfumier ruling against smell-alike scents in L'Oreal v Bellure (see blogs here and here), and there is even a delicious photo of a bunch trade mark enthusiasts enjoying themselves at the roulette table (surely not with their clients' money, speculates Merpel ...)
Full contents and details of Trademark World here
More on LG Philips v Tatung
A couple of things, in fact, arising from the IPKat's post on the recent Court of Appeal decision in LG Philips v Tatung on "intermediate generalisation". First, neither IPKat bloggie Jeremy [Phillips] nor the Lord Chief Justice [Lord Phillips, left - who presided over this decision], is related to the doubly unsuccessful claimant in this case. Readers with sharp eyes and an acute sense of spelling will already have noticed that the litigant has but one "l" while the two jurists each have two "l"s.More seriously, a deeply respected but regrettably anonymous friend of the IPKat notes (with emphasis added):
"The EPO concept of an intermediate generalisation constituting added subject matter was confirmed. Accordingly, a claim amendment introducing an isolated feature from the description or the figures (as in this case) without the other features of the described embodiment is considered to be a non-allowable amendment.Strong words, says the IPKat—who wonders whether any of his readers has a handy means of distinguishing a policy from a principle.
Para. 41: To "extract a feature (which was neither remarked on in the specification nor of significance to the person skilled in the art) of one of the preferred embodiments of the invention and insert it into a claim, while ignoring the other features of that embodiment" is not permitted.
Para 42: Again, the UK courts seem to accept subservience to the EPO Enlarged Board: "The Enlarged Board has developed the law on added matter in ways which can be said to involve superimposing a degree of policy over what had been perceived by the English courts as a relatively pure issue of principle".