Latest IAM; ECJ treats for this week

The IPKat's copy of the April/May issue of coveted bimonthly Intellectual Asset Management has now reached him. Well written and elegantly presented, this periodical has carved out a distinctive niche for itself in the crowded market for IP journals, seeking to integrate legal, commercial, investment and management issues and to write about them in a manner that speaks directly to the IP decision-maker. Topics featured in this issue include

* A European perspective on global patent workload: talk of poor quality patents and flooding has become commonplace over recent years, but a closer look at the facts suggests that things are not as bad as they first seem. While patent offices face serious challenges, major changes to the current system are not the answer;

* Directors take heed: a recent Delaware Supreme Court decision could have a profound impact on the board members of many US companies. It indicates that failure to oversee intellectual assets may lead to personal liability

* The ethics of intellectual asset management: the shift from the familiar corporate asset bases – centred on traditional physical and financial assets – to one increasingly based on intangible intellectual capital assets brings with it changing laws and subtle new ethical problems.

The IPKat is always pleased to see the ethics of IP discussed. When this subject is raised, it is usually ad hoc, lacks a broad perspective and is front-loaded towards issues such as protectable subject-matter, the scope of enforcement and compulsory licensing, rather than looking towards the perspective of management. Merpel says, but morality's a tricky topic: for every single IP rule or practice there are so many potential ethical 'takes' - and while they can't all be correct, they can all be justified ...


Now that the European Court of Justice has switched from festive to functional mode, the IPKat is pleased to report that we can expect some really exciting decisions this week, all relating to Europe's increasingly complex, over-analysed and hyper-conceptualised trade mark laws. This Thursday, 19 April, we have two block-busters:

Judgment is being given in Case C-273/05 P Office for Harmonisation in the Internal Market v Celltech. This is an appeal by OHIM against the decision of the Court of First Instance to allow registration as a Community trade mark of the word CELLTECH. According to OHIM:

"Although the Court of First Instance recognised "that at least one meaning of the word mark CELLTECH is 'cell technology'", it incorrectly required the Board of Appeal to give "an explanation of the meaning in scientific terms of cell technology" in order to explain "in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it";

The Court of First Instance wrongly disregarded the principle following which a mere combination of elements, each of which is descriptive of characteristics of the goods or services in question, without any unusual variations as to syntax or meaning, remains descriptive of those characteristics for the purposes of Article 7(1)(c) CTMR;

The Court's statement that a finding of descriptiveness or of lack of distinctiveness requires a description of the "intended purpose" of the goods and services in question is erroneous as a matter of law. Although the Court recognised that "cell technology" is an "area of use" for the goods and services in question, it wrongly held that the description of such an "area of use" would be insufficient to establish that the sign CELLTECH is descriptive and therefore devoid of distinctiveness;

The Court incorrectly considered that the description of a process for the production or the supplying of the goods and services in question does not fall within the ambit of Article 7(1)(c) CTMR;

The Court also failed to give reasons in support of the latter finding".

Judgment is also expected in Case C-381/05 De Landtsheer Emmanuel. This is a reference for a preliminary ruling from the Cour d'appel de Bruxelles on the interpretation of Articles 2(2a) and 3a(b) of Directive 84/450 as amended by Directive 97/55 on comparative advertising. The questions referred are as follows:

"1. Does the definition of comparative advertising cover advertisements in which the advertiser refers only to a type of product, so that in those circumstances such advertisements must be regarded as referring to all undertakings which offer that type of product, and each of them can claim to have been identified?

2. With a view to determining whether there is a competitive relationship between the advertiser and the undertaking to which reference is made within the meaning of Article 2a of Directive 84/450:

(a) On the basis in particular of a comparison of Article 2a with paragraph (b) of Article 3a, should any undertaking which can be identified in the advertising be regarded as a competitor within the meaning of Article 2a, whatever the goods or services it offers?

(b) In the event of a negative response to that question and if other conditions are required in order for a competitive relationship to be established, is it necessary to consider the current state of the market and drinking habits in the Community or is it necessary also to consider how those habits might evolve?

(c) Must any investigation be confined to that part of the Community territory in which the advertising is disseminated?

(d) Is it necessary to consider the competitive relationship in relation to the types of products being compared and the way in which those types of products are generally perceived, or is it necessary, in order to assess the degree of substitution possible, to take into account also the particular characteristics of the product which the advertiser intends to promote in the advertising concerned and of the image he intends to give it?

(e) Are the criteria by which a competitive relationship within the meaning of Article 2(2a) can be established identical to the criteria for verifying whether the comparison satisfies the condition referred to in paragraph (b) of Article 3a?

3. Does a comparison of Article 2(2a) of Directive 84/450 1 with Article 3a of that directive mean that

(a) either any comparative advertising is unlawful which enables a type of product to be identified where a competitor or the goods offered by him cannot be identified from the wording?

(b) or the lawfulness of the comparison must be considered in the light only of national legislation other than that by which the provisions of the directive on comparative advertising are transposed, which could lead to reduced protection for consumers or undertakings offering the type of product being compared with the product offered by the advertiser?

4. If it should be concluded that there has been comparative advertising within the meaning of Article 2(2a), must it be inferred from Article 3a(1)(f) of the Directive that any comparison is unlawful which, in respect of products without designation of origin, relates to products with designation of origin?"

Those are the legal questions, says the IPKat. The real question is whether De Landtsheer, which makes MALHEUR beer, is allowed to describe its beer by using wine-related terms like ‘BRUT RESERVE’ and ‘Champagnebier’ (Champagne beer).

For those who can't wait till Thursday, there's a tasty hors-d'oeuvres on Wednesday from the Court of First Instance, this being the judgment in Joined Cases T-333/04, T-334/04 House of Donuts v OHIM - Panrico (House of Donuts). This is an appeal against the decisions of the Opposition Division and Board of Appeal to uphold an opposition to the application to register as a Community trade mark the figurative marks "House of donuts" and "House of donuts 'The Finest American Pastries'", on the basis of a likely confusion in Spain with the earlier Spanish word and figurative trade mark DONUTS.

The IPKat and Merpel will do their best to keep you posted on these developments as they occur, so keep your eyes peeled!