Monday miscellany

Pizza action goes flat.  Back in July of last year, this Kat reported on an action brought by the New Jersey Turnpike against a Florida pizza establishment, Jersey Broadwalk Pizza, objecting to its use of a lookalike logo that closely resembled its own Garden State Parkway emblem. The news from Chris Torrero (Katpat!), who unearthed the original item, is that the New Jersey Turnpike's action failed.  According to Techdirt (here), Judge William Martini dismissed the suit, saying the Florida business had "minimum contacts" with state residents aside from online sales of branded merchandise. 

Apparently the Turnpike is considering an appeal.

Around the weblogs.  The IP blogosphere has enjoyed a peaceful period over the Easter weekend, but there have been some signs of life. One comes from former Kat Mark Schweizer, this time on the MARQUES Class 46 weblog, on the prospect of the launch of the Apple Watch being delayed in Switzerland by a legal obstacle in the form of a national patent going all the way back to 1985. There's also an informative and indeed surprising post from Mark Anderson on IP Draughts, "Who practises IP in the UK?", which gives a statistical breakdown of IP practitioners by profession and demonstrates that the vast majority of them are not patent and trade mark attorneys but regular common-or-garden solicitors. On IP Africa, Katfriend and IP enthusiast Kingsley Egbuonu observes that the African Declaration on Internet Rights and Freedoms has what he describes as a "0% IP fat content". The selfsame Kingsley also posts Part I of a piece entitled "Busy Time for Africa at WIPO", with the prospect of more to come. Finally, but no less significantly, PatLit reports that the Belgian ratification statute for the Unified Patent Court Agreement is under threat, with questions being raised as to the constitutionality of its provisions.

WEBSHIPPING: ripe for a second visit to Luxembourg?  Via Meriem Loudiyi (INLEX IP Expertise, Paris) comes news that this Kat didn't spot himself, though he wishes he had. On 28 January 2015 in Case R 2425/2013-4 Chronopost v DHL Express (France), the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) annulled a decision of the Cancellation Division which had upheld an action filed by DHL for cancellation of Chronopost's 2003 Community trade mark (CTM) WEBSHIPPING.  DHL originally filed for cancellation in July 2012 on the grounds of non-use. Not our fault, said Chronopost: there were highly unusual and perfectly proper reasons for non-use. Said the company, it also owns the French trade mark WEBSHIPPING and has been in dispute with DHL over these marks since 2004. Chronopost had sued DHL for trade mark infringement, winning in the Paris Court of First Instance in a decision upheld by the Court of Appeal. However, notwithstanding these rulings DHL continued to use the mark and applied to cancel the CTM for non-use. In its defence Chronopost did not file any evidence of use -- since none existed -- but, rather it argued that, given the intense use which had been made (and which was still made) of the mark by DHL throughout the European Community in relation to identical products and services, it could not freely use its own mark, as consumers would not understand that identical services could be provided under the same mark by the two main competing businesses in this field of activity. 

Web shipping: a deeper meaning?

Does an act of infringement constitute a proper reason for non-use of a CTM?  Yes, said the Board of Appeal. First, the concept of 'proper reason for non-use' is not limited to situations and cases covered by the earlier rulings referred to in the Cancellation Division's decision. Secondly, it was regrettable that the Cancellation Division had upheld the cancellation action merely because this case did not correspond to any of the previous decisions dealing with this question. Here the fact that the mark was already used by an infringer completely prevented the legitimate owner from using its own mark freely, as there was a real risk of confusion in the consumer’s mind, especially as the mark was used for identical services. What is more, by using the mark, the legitimate owner would have indirectly enhanced the value of its direct competitor’s mark, which was completely unreasonable. The Board therefore concluded that the cancellation of such a mark would imply that a mark could be systematically infringed until it becomes vulnerable to cancellation for non-use, which would be completely unfair. Adds Meriem, "The Board’s decision is both legally founded and business-orientated, and is arguably the correct one". This Kat is by no means sure that this is the case and expects that there will be an appeal. Given the litigious tendencies of the parties, the potential value of the mark and the novelty of the legal point at stake, he predicts that this dispute will be marked by a second visit of WEBSHIPPING to the Court of Justice of the European Union [for reports on the first visit on this weblog click here and here].

Like Maine Coons, Irish
stamps take some licking ...

A first for Ireland, as court orders graduated response. "Irish Court Grants Injunction against ISP to Adopt Graduated Response Scheme" is a headline from a Mason Hayes & Curran Latest Insights release which you can read here. In short, on 27 March Mr Justice Cregan (Irish Commercial Court) held that an injunction could be granted against an internet service provider (ISP), UPC Communications Limited, ordering it to implement and adopt a graduated response scheme to assist in the enforcement by music companies of copyright infringement against that ISP’s subscribers. At present the precise scope of the scheme is not yet known, since the judge has asked the parties to make further submissions as to the form of the order, including any necessary exclusions and safeguards. However, it does seem that the ISP will be required to send at least two letters to subscribers that are identified by the music rights-holders as infringing copyright via the ISP’s network. Adds the note, "This is the first occasion that a court ordered or “common law” graduated response system has been imposed anywhere in the world". The IPKat will be keeping his eye out for further developments ...