Friday fantasies

Forthcoming events. Please do remember to check out the IPKat's Forthcoming Events page. We're always adding new conferences, seminars, talks and the like.  Maybe one of the IPKat's blogging team will be there, so don't forget to say "hello"!

IP and Fashion. One forthcoming event is this year's nearly-annual conference on Intellectual Property in the Fashion Industry, coming up in Central London on 22 October.  Run by CLT, it's definitely one of the more fun events of the year, combining serious legal perspectives with some very lively questions, answers and debating points from IPKat blogmeister Jeremy in the chair.  You can check out the details of this year's programme here. He's not the only Kat on the programme, though, or even the only blogger.  Katonomist Nicola Searle is speaking as well as Art & Artifice blogger Rosie Burbidge. There is also a chance to meet Judge Melissa Clarke, who is one of the Intellectual Property Enterprise Court's judges.  Do join us!

It's a crime not to have mentioned it, so the UK government's Department of Business Innovation & Skills has been jogging the memory of the various Kats to the effect that they have yet to record that the UK's IP Crime Report for 2014/15 has now been published. You can access the full version of the report here, or the highlights here. The government is convinced that this is good news, but Merpel is not so sure.  Does a drop in the number of reported crimes might mean (i) that there are fewer crimes to report, (ii) that more crimes are not being detected and therefore can't be reported or that (iii) people have become less sure where and indeed whether to report IP crimes in light of the retraction and retrenchment of the UK's enforcement authorities in the wake of the 2008 financial crisis and subsequent public spending cuts.  

Fed up with patents? If so, you should have been at the AIPPI-UK Meeting on 17 September 2015: it was an "Everything Else in IP Round-Up 2015", meaning "everything that isn't patents. Generously hosted by Freshfields Bruckhaus Deringer LLP in its sumptuous London office, this was the latest talk in James Mellor QC’s ‘Jackanory’ series of IP updates. James looked at trade marks, copyright and trade secrets/confidential information.

On trade marks, James focused on recent case law. TOP Logistics and Others [2015] CJEU C-379/14 confirms the principle of Zino Davidoff SA v A & G Imports Ltd [2002] CJEU C-414/99, that goods stored in a warehouse (in this case, Bacardi rum) constitute imported goods as soon as they leave the customs arrangement. Such importation deprives the trade mark owner of the possibility of controlling the conditions of first marketing the product in the European Economic Area, which can damage the value of the mark. Examining Diageo Brands BV v Simiramida-04 EOOD [2015] C-681/13) James drew attention to the CJEU’s strict approach to countries refusing to enforce judgments from another Member State on the grounds of public policy. He then considered the publicity-friendly Société des Produits Nestlé SA v Cadbury UK Ltd [2015] C-215/14. He discussed how the Kit Kat contains three essential features: one resulting from the nature of the goods themselves (the slab shape) and two which are necessary to obtain a technical result (shape and number of grooves): essentially the case will not make the “assessment of distinctive character” any easier in trade mark infringement disputes.

James then looked at the effects of co-existence in recent UK case law (IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439, J. W. Spear & Sons Ltd and others v Zynga Inc [2015] EWCA Civ 290 (the SCRABBLE/SCRAMBLE case), and Maier and another v ASOS Plc and another [2015] EWCA Civ 220): if there was confusion between two trade marks or the risk of it, (i) it would have come to light, and (ii) the trade mark owner would have reacted. Looking at SCRABBLE/ SCRAMBLE, James drew attention to the fact that the first court’s refusal to find trade mark infringement was significantly affected by the length of time within which the two games had knowingly co-existed in the market together. The action was only brought after Mattel lost out in its bid to market a physical version of Zynga’s electronic Scramble game. Similarly in Assos v ASOS, ASOS successfully ran an own-name defence, which was bolstered by the marks’ six years of coexistence. As a rule of thumb, James found that the shorter the length of the coexistence, the wider the scale of the coexistence would need to be for it to be successfully relied upon. This he contrasted with the far higher threshold required to establish “peaceful co-existence” in OHIM proceedings, which to his knowledge has never yet succeeded as an argument at General Court or CJEU level.

Regarding copyright, James examined a number of CJEU and UK cases. He reminded us of the guiding principle in Svensson and others v Retriever Sverige AB (Case C- 466/12) that “the provision on a website of clickable links to works freely available on another website does not constitute infringement”, but predicted that the question of whether links make works available to a “new public” will continue to cause problems. He then turned to ITV v TVCatchUp [2013] (Case C-607/11) and the defence of “retransmission by cable” under section 73 of the UK's Copyright, Designs and Patents Act (CDPA) and considered the questions which have been referred to the CJEU, centring around the meaning of “cable”.

James told us to watch out for potential reform of UK Copyright legislation, following the consultation on repeal of section 73 of the CDPA. EU reform is also on the cards in light of the Digital Single Market Strategy (May 2015) New Commission. He also flagged potential international reform as a result of the proposed WIPO Treaty on the Protection of Broadcasting Organisations, which will give “Rome +” protection.

Turning to trade secrets, James looked at the proposed new EU Directive on the protection of trade secrets; he found the drafting problematic because of uncertainty and its insufficient protection of legitimate interests. The definition of “trade secret” was not bad, he added, predicting that it will signal the demise of a whole body of built-up “breach of confidence” UK case law.