The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 18 December 2017

Release by IP Australia of draft of legislation for partial implementation of Federal Government's response to Productivity Commission final report

Last month, IPKat had the privilege of publishing an interview with Patricia Kelly, Director General of IP Australia in connection with both the "Intellectual Property Arrangements: Productivity Commission Inquiry Report" and the "Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements". Kat friends Tim Golder and Lauren John of Allens report on legislative developments in connection with these publications.

IP Australia has released an exposure draft of the legislation that will partially implement the Federal Government's response to the Productivity Commission's (PC) final report on its inquiry into Australia's IP arrangements. We discuss some of the significant amendments to Australia's IP laws which are included in the draft legislation.

The death of the innovation patent is near. Well, sort of…

They were meant to be the cheaper, faster alternative to standard patents, intended to protect lower level or incremental inventions and promote innovation by SMEs. Yet just like the petty patent system which came before it, the innovation patent system is set to be abolished (or rather 'phased out'). An innovation patent provides fast protection and lasts for 8 years from the filing of the application. An innovation patent must meet the same novelty test as a standard patent, but only needs to possess an 'innovative step' (a lower threshold than the 'inventive step' required for a standard patent). The PC recommended that the innovation patent system be abolished because it does not achieve its objectives and protects innovations that are of low social value.

The proposed amendments will take effect 12 months after the amending Act receives Royal Assent – most likely some time in 2019. The proposed amendments mean that IP Australia will no longer be able to (1) grant an innovation patent on an application having an effective filing date on or after the day the amendments take effect or (2) certify a claim of an innovation patent having a priority date on or after that day (an innovation patent must be certified before it can be enforced). The current regime will continue to operate for existing applications. Also, the existing rights to file divisional applications and convert a standard patent to an innovation patent will remain for any patent/application that was filed before the amendments take effect. So fear not, innovation patent enthusiasts – there will still be innovation patents in effect for up to 8 years after the amendments commence.

Taking the grey area out of the grey market?

The PC recommended that the Government amend the Trade Marks Act 1995 (Cth) to ensure that parallel imports of marked goods do not infringe an Australian registered trade mark when the marked good has been brought to market elsewhere by the owner/licensee of the mark. Currently, s123(1) provides that an importer of trade marked goods will not commit an infringing act if the trade mark was applied to the goods 'by, or with the consent of, the registered owner of the trade mark'.

Although cast in quite simple terms, the interpretation and application of s123(1) has proved to be a minefield for importers (and lawyers!). The onus lies on an importer to prove all of the requirements of the defence, which can be difficult as an importer is unlikely to be privy to the commercial arrangements between the Australian registered owner and the party that put the goods on the market. For example, in the Sport Leisure case, a retailer imported goods purchased from an Indian manufacturer who had obtained a licence from the Australian trade mark licensor. The licence terms prohibited the Indian manufacturer from supplying those goods outside of India, and so the manufacture, in the knowledge that the goods would be exported, did not constitute an application of the mark with the consent of the Australian licensor. Thus the importation and sale of those goods in Australia was held to infringe.

The current provision will be replaced by a new, and rather wordy, s122A (shown below), which partially reflects the corresponding provision in the trade marks legislation of our friends across the ditch (s97A, Trade Marks Act 2002 (NZ)). The new provision will apply to any infringement actions brought after the provision commences.

The new provision is intended to reduce the evidentiary burden on the importer (who will only have to establish that it was 'reasonable to assume' the trade mark had been applied with consent). The concept of 'consent' has been extended to include consent subject a condition, to overcome, amongst others, the decision in the Sport Leisure case. The provision also refers to the consent not only of the owner of the mark in Australia, but also to a range of people set out in s122A(1)(c). This is to protect the importer in the situation where the Australian trade mark has been assigned to a related company or distributor in order to circumvent the application of the current s123.

122 A International exhaustion of registered trade mark in relation to goods
             (1)  In spite of section 120, a person who uses a registered trade mark in relation to goods does not infringe the trade mark if:
                     (a)  the goods are:
                              (i)  similar to goods in respect of which the trade mark is registered; or
                             (ii)  closely related to services in respect of which the trade mark is registered; and
                     (b)  the goods have been put on the market in Australia or a foreign country; and
                     (c)  at the time of use, it was reasonable for the person to assume the trade mark had been applied to, or in relation to, the goods by, or with the consent of, a person who was, at the time of the application or consent (as the case may be):
                              (i)  the registered owner of the trade mark; or
                             (ii)  an authorised user of the trade mark; or
                            (iii)  a person authorised to use the trade mark by a person mentioned in subparagraph (i) or (ii), or with significant influence over the use of the trade mark by such a person; or
                            (iv)  an associated entity (within the meaning of the Corporations Act 2001) of a
person mentioned in subparagraph (i), (ii) or (iii).
Note:         For goods that are similar, see subsection 14(1).
             (2)  A reference in paragraph (1)(c) to consent to the application of a trade mark to, or in relation to, goods includes, without limitation, a reference to:
                     (a)  consent subject to a condition (for example, a condition that the goods are to be sold only in a foreign country); and
                     (b)  consent that can be reasonably inferred from the conduct of a person mentioned in subparagraph (1)(c)(i), (ii), (iii) or (iv).
             (3)  In determining whether the first‑mentioned person in subparagraph (1)(c)(iii) was authorised to use the trade mark or had significant influence over its use, disregard how that authority or influence arose, for example:
                     (a)  whether it arose directly or indirectly; or
                     (b)  whether it arose by way of proprietary interest, contract, arrangement, understanding, a combination of those things, or otherwise.

Changing the grace period for challenge non-use of a trade mark

Currently, a ‘grace period’ applies such that a registered trade mark may not be removed for non-use until 5 years have elapsed from the filing date of the application in respect of the registration. To address the PC's concerns that there are many unused trade marks on the register, the amendments will reduce the grace period to 3 years from the date the particulars of the trade mark were entered on the register. Wait… there's more!

If that wasn't enough change for you, don't worry! IP Australia has undertaken separate consultation on proposed reforms to implement other aspects of the Government's response, including amending Australia's inventive step requirements (a contentious proposal given those requirements were amended in 2013 to bring Australia's inventive step laws into line with those in the UK and Europe) and introducing an objects clause into the Patents Act 1990 (Cth).

Linking for profit, technical means and burden of proof - German BGH applies CJEU case law to Google’s Image Search

A few months ago this blog reported on the very interesting decision of the German Federal Court of Justice (BGH), that refused the idea of having to apply the GS Media [Katposts here] presumption of knowledge for for-profit link providers to search engines.

The German court did so on consideration of the particular importance of search services for the functioning of the internet. According to the BGH, the provider of a search function cannot be expected to check the lawfulness of the images automatically retrieved from publicly accessible websites.

At last the reasons for the judgment have been made available, and Katfriend Mirko Brüß (Waldorf Frommer Rechtsanwälte) has had a chance to analyze them.

Here’s what Mirko writes:

Google’s Image Search has been the subject of copyright-related decisions of Germany’s Federal Court of Justice in 2010 (case I ZR 69/08) and 2011 (case I ZR 140/10).

In September 2017, the BGH had a chance to revisit the subject and used this opportunity to provide clarification on a number of issues, referencing several of the latest decisions of the Court of Justice of the European Union (CJEU). 

The written reasons are now available (case I ZR 11/16).


The claimant in this case operated a website that provided member-only access to erotic images. The defendant operated another website, where users could use an integrated search function to search images. This search function was “powered by Google”, as was pointed out in the search results. The claimant noticed that several of his copyright-protected images were presented as thumbnails in the search results. They were indexed by Google on third websites where they had been uploaded by members of the claimant’s website without his consent. The claimant requested the defendant to cease and desist from such activities, submitting that the availability of the images infringed his right of communication to the public.

The courts at first instance and on appeal in Hamburg rejected the claims. This result was now confirmed by the BGH, but with a different legal approach.

Rated R: Restricted
An act of communication to the public

First off, the BGH rejected the idea that the images had been made available to the public by the defendant. The court found that such use of the works would require the defendant to store copies of the images on his own servers, which was not the case here. The thumbnails were stored on Google’s servers instead, and then embedded on the defendant’s website. According to the BGH, this does not constitute an act of making the images available to the public, even when a visitor of the website could have the impression that the images are actually stored on the defendant’s servers.

Next, the court provided a thorough analysis of the right of communication to the public (Art. 3(1) of Directive 2001/29, which is implemented in § 15 para 2 UrhG (Urheberrechtsgesetz, the German copyright code).

Referring to the CJEU decisions in GS Media, Filmspeler [here] and Ziggo [here], the BGH explained that the concept of ‘communication to the public’ requires an individual assessment and has two main components: an act of communication and a public that is addressed by this act.

Looking at the facts at hand, the BGH found that the defendant had committed acts of communication. According to the judges, the defendant had deliberately provided access to copyright works by integrating Google’s Image Search into his website, thus enabling users to access works that were freely available on third-party websites. Referring to Filmspeler and Ziggo, the court pointed out that actual knowledge of the availability of the specific images of the defendant is not required when assessing this question.

A communication to a ‘public‘ was also affirmed by the BGH. While the defendant had claimed that his users accessed the images as the result of individual searches, the judges pointed out that subsequent views of the images would be sufficient to be considered a communication to a  ‘fairly large’ number of persons.

It was undisputed between the parties that the images in question were already available not only on the claimant’s website, but on other websites as well, which Google’s search engine subsequently indexed. It remained uncertain whether such uploads had been made with the claimant' consent (via his website's TOS).

Because the images were already available elsewhere, the BGH turned to the next two criteria for a ‘communication to the public’ - either specific technical means that are different from those previously used or, failing that, a ‘new public’ (citing SGAE/Rafael, Murphy, ITV Broadcasting, Svensson/Retriever, BestWater and others).

The court went on the state that both technical means are identical when the original and the subsequent communication are made ‘on the internet‘. This is an astonishingly broad definition, unless the court had the intention to refer to the “http” protocol or the “world wide web” when using the term ‘internet‘. For the case at hand, it does not really make a difference, because in both cases the works were used on ‘regular‘ websites.

GS Media
Lacking a communication using different technical means, the court addressed whether a ‘new public‘ was reached by the defendant’s website. Referencing Svensson/Retriever and Filmspeler, the BGH defined a new public as one that that was not already taken into account by the copyright holder when he authorised the initial communication to the public. When the work is freely available on a website with the consent of the copyright holder, a subsequent communication to the public is not restricted.

The burden of proof

The Higher Regional Court of Hamburg had dismissed the claimant’s action on these grounds. According to the Higher Regional court, the claimant had the burden of proving that the images were only available in a restricted area of his website and also that the site’s TOS forbid the uploading of images to third websites. This concept was rejected by the BGH, which saw the burden of proof the other way around: it is up to the defendant to demonstrate (and prove) that the images were accessible in an unrestricted (not password-protected) area of the claimant’s website.

This burden of proof also extends to the question whether the claimant’s TOS allowed users to upload the images on another websites. The BGH pointed out that it was upon the defendant to prove such consent in the TOS existed.

Up to this point, it was looking good for the claimant, as the BGH generally agreed that the defendant had made an act of communication to the public.

Internet addiction
The GS Media presumption

However, the court dismissed the claims on other grounds than the previous instances. Again looking at GS Media and Filmspeler, the BGH stated that an act of communication can only be considered unlawful when the person knew or ought to have known that the hyperlink he posted (or provided via his search engine) provides access to a work unlawfully placed on the internet. Furthermore, such knowledge can generally be presumed when the posting of hyperlinks is carried out ‘for profit‘.

It has been unclear what exactly constitutes a posting of hyperlinks ‘for profit‘. The BGH took a very broad approach and sided with the Regional Court of Hamburg [overview of other countries here]. According to the judges, a profit-making intention can be assumed for any link that is posted on a website that is operated for profit, e.g. that shows advertising.

(Non-)Applicability of the presumption to search engines

This would apply to the defendant and Google as well. However, the BGH decided that the presumption of knowledge of infringement cannot be applied in cases where the infringement is made by a search engine. The judges stated that the defendant could not reasonably be expected to know that the pictures indexed by Google were made available unlawfully. Making the necessary individual assessment, the judges highlight the importance of search engines and hyperlinks for a working internet. Search engines play an essential role for the use of the internet, according to the judgment. A general obligation to monitor the indexed content would result in unreasonable obligations for the operators of search engines and endanger their business model. It would also conflict with the intention to foster the development of the information society as laid down in recital 2 of the Directive 2001/29/EC.

As a result, under the circumstances at hand, an unlawful act of communication to the public by the defendant (or Google, for that matter), can only by found once the defendant knew or should have known of the unlawful nature of the work that is linked to. Such knowledge would be present once the defendant was expressly informed by the rightholder of the unlawful nature of the information appearing on the site.”

Sunday, 17 December 2017

The first modern blockbuster IP merchandising campaign? Disney, Davy Crockett and the coonskin cap

It is holiday season, and this Kat recalls his earliest memory of craving a holiday gift. It was the mid-1950’s, America was awash with Davy Crockett mania, and all this young Kat wanted was a coonskin cap, just like Davy wore. His wish was not granted (the Kat parents showed both wisdom and fortitude), and it was only much later that this Kat came to realize the genius that stood behind Disney’s marketing of the Davy Crockett story. With less than 10 shopping days to Christmas, it is worth taking a Kat’s eye retrospective of what may have been the first big-time modern IP merchandising campaign.

David ("Davy") Crockett (1786-1836) grew up in the state of Tennessee, where he gained some notoriety for hunting exploits and his storytelling. He entered politics, elected first to the Tennessee state legislature, and later to the U.S. Congress. A narrow election loss in 1835 led him to travel to what is now the State of Texas (then known as the Mexican state of Tejas). Once there, he took part in the Texas Revolution and he died at the legendary Battle of the Alamo (the remnants of which are now located in the city of San Antonio, Texas). There was little in his story as a public figure that merited enduring historical fame, although he seems to have become a minor cultural figure in the 19th century via stage plays and almanac entries, and he was always identified with the Battle of the Alamo. But in the 1950’s, Disney took the tale of Davy Crockett to a whole new level.

As the story goes, the background to Crockett-mania was Disney’s aspiration to finance the building of the Disneyland theme park in Anaheim, California. One step in doing so was to do a series about Davy Crockett. In Disney’s words—" “It’s time to get acquainted, or renew acquaintance with, the robust, cheerful, energetic and representative folk heroes. Who better than Davy?” What followed was a television series consisting of five, one-hour long episodes (described as “insanely popular” at the time, reportedly attracting 12 million viewers) broadcast over the period from December 1954 to December 1955, a full-length movie in color— “Davy Crockett, King of the Wild Frontier”, plus a widely successful theme song— “The Ballad of Davy Crockett." The first stanza of the Tennessee Ernie Ford version of the song, which we could all sing in its entirely by heart, goes like this (see here for the full lyrics):
Born on a mountain top in Tennessee

Greenest state in the land of the free

Raised in the woods so he knew ev'ry tree

Kilt him a b'ar [Merpel notes that is a “bear”] when he was only three

Davy, Davy Crockett, king of the wild frontier
This three-prong attack—television, movie and a successful song-- was an aggressive attempt by Disney to exploit various avenues of media distribution for the story of Davy Crockett, focusing on a single character, whose modest exploits were embellished and packaged for 20th century consumption. Modern commercial television was less than a decade old and Disney was still experimenting with the best ways to exploit it. Only the Mickey Mouse franchise was comparable, with a three-decade history of movies and the launch of The Mickey Mouse Club television program in that same year (1955).

But it was the craze over the coonskin cap that truly distinguished the Crockett merchandising campaign. The headgear, historically made of racoon fur, had become popular in 19th century frontier times. The pioneers, especially those who had settled in the Mississippi Valley, were attracted to the racoon hat being worn, apparently for spiritual reasons, by Native Americans in that region; the pioneers soon adopted this fashion. The hat went on to become a defining symbol of the American pioneer’s free spirit at its best. But later in the 19th century, the coonskin cap lost its allure and dropped out of fashion, even being identified by some with rural “bumpkins”. With more than a whiff of condescension, a railroad tycoon, in giving testimony in 1886 before a U.S. Senate committee, dismissively said (see link below to article by Zachary Crockett)—
"The class of men to whom I allude as ‘coonskin cap fellows’ are worth but very little to merchants. I do not include in the ‘coonskin cap’ [category] the larger, more respectable, middle class all over the country. These [coonskin cap] fellows, who number in the hundreds of thousands, are worth very little to anyone.”
By the early 1900’s, the coonskin cap had become at a best a trivial piece of frontier nostalgia. And then came Disney, who made it the centerpiece of Disney’s merchandising efforts regarding the Davy Crockett franchise. This Kat could not find out how Disney came to adopt the coonskin cap (there is scant evidence that Crockett ever wore such a hat), but there is no doubt of its commercial success. In the words of The York Times— “Children wore coonskin caps to school and wore them to bed.” As well, there were Crockett frontier costumes, toy muskets, cap pistols, powder horns, color slide sets, rings, frontier bags, bill folds, T-shirts, trading cards, games, puzzles, comic books, even Crockett bubble gum, cookies and sundaes.

For the first three years after launch, 5,000 coonskin caps were being sold each day (bringing with it a brisk market for counterfeits). The cost of racoon fur jumped from 25 cents to $8 per pound, until supply became insufficient and ersatz furs were being used. By the end of the 1950’s, it is estimated that over $300 million dollars (equal to over $2.5 billion dollars today) of Crockett merchandise had been sold, equal to $10 for each child between the ages of 5-14. While hardly in favor today, 15,000 coonskin caps (at a price of $12.99) are still being sold yearly at the Alamo gift shop in Texas.

For Kat readers who think that the Crockett craze was solely a Yankee affair, consider that Disney heavily marketed the movie in the UK in 1955 in advance of its initial 1956 screening here. The song was a huge hit in the U.K as well as in France. But it was not only the movie and theme song that crossed the Atlantic pond. By chance, while waiting at a bus stop earlier in the week, this Kat was telling an acquaintance, who had grown up in south London, about his interest in the Crockett story. This friend recalled that, as a child during that time, he was the envy of his friends, being the only one sporting a coonskin cap.

From the vantage of time, it still seems remarkable how a minor cultural figure from 19th century American history was transformed into a 20th century entertainment icon, and how a piece of 19th century headwear emanating from the traditions of Native Americans served as the foundation for perhaps the first modern instance of IP merchandising hysteria (and how historical memory can be recreated and reworked). What there is to learn generally about IP merchandising, other than to acknowledge that Disney seems to have a special touch, this Kat leaves to Kat readers. (In particular, though, one wonders how central was Fess Parker, the actor who played Davy Crockett, and who was forever identified in the public mind with the coonskin cap.) In the meantime, all hats off (of the coonskin type) to Davy Crockett, “King of the Wild Frontier.”

For more on Crockett and the coonskin cap, see here by Zachary Crocket (perhaps a descendant?).

Picture on top right,coonskin cap worn by actor Fess Parker, "The saga of Davy Crockett's coonskip cap", by Dwight Blocker Bowers, Smithsonian National Museum of American History, here.

By Neil Wilkof

Thursday, 14 December 2017

Around the IP Blogs!

JIPLP (The weblog of the Journal of Intellectual Property Law and Practice)

The JIPLP “is thrilled to announce that Sir Richard Arnold (High Court of England and Wales - Chancery Division) has accepted the invitation to join its Editorial Board.”

IPKat stays in motion... for IP blogs.

IPKat's own Eleonora Rosati has written a very interesting article discussing the Saudi Arabia citizen Sophia questions that have been asked with increasing frequency, i.e. whether and to what extent AI has the potential to replace humans, including in the creative fields. 

Barbara Cookson discusses the recent position papers from IP organizations on Brexit, which mostly are “very demanding and expect the UK's final deal to cover detailed issues on intellectual property”, together with the EUIPO’s recent paper, which seems to read as “a very strong message that it is brand owners responsibility to look after themselves.”. 

MARQUES CLASS 46 (Trade Marks)

-- Representation of new types of trade marks

Robert Guthrie, Chair of the MARQUES European Trade Mark Law and Practice Team, brings news of a Common Communication on the representation of new types of trade marks

-- Moldovan National IP Office to take over police powers 

News from Moldova: Recently, the Ministry of Justice of the Republic of Moldova has proposed for public debate a draft law, which also covers the area of intellectual property. The draft law was designed to improve the business climate. In this respect, adjustments are proposed to the Criminal Code, the Criminal Procedure Code, the Contravention Code and a number of other normative acts.

-- Master: On fizzy drinks, trade marks, behavioural economics and the principle of territoriality 

In Case T-61/16 Coca-Cola v EUIPO and Mitico, the General Court ("GC") had a second opportunity to make its opinion on the "Master" mark heard. The first time around, the GC was not impressed by the EUIPO's reasoning. In this regard, nothing has changed. But the GC's present judgment raises new questions concerning behavioural economics and the principle of territoriality.

MARQUES CLASS 99 (Trade Marks)

-- Design filings worldwide grow by 10 per cent

An estimated 963,100 industrial design applications, containing 1.2 million designs, were filed in 2016, according to figures published in WIPO's annual World Intellectual Property Indicators survey on 6 December last.

-- Russia ratifies Hague Agreement

In a statement dated 30 November, WIPO announced that the Russian Federation has deposited its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The Geneva Act will enter into force, in respect of the Russian Federation, on 28 February 2018.

When a trade mark rights holder (statutory/common law), is estopped, on the way to the forum, or anywhere else, from acting against a perceived infringing party, it is not a nice thing. But that is in fact exactly what the respondent in the recent ruling in Honda Giken Kogyo Kabushiki Kaisha t/a Honda Motor Co Ltd v Big Boy Scooter [2017] ZAGPPHC 513 suggested should happen -- Afro-Buff brings a detailed summary of the case. 

Photo courtesy to the anonym from Weibo. 

UPC - update from UK on statutory instruments

The saltire
A quick update from the UK on the outstanding legislation that will enable the UK to ratify the UPC Agreement: yesterday the Privy Council made an Order approving the draft Scottish statutory instrument that grants certain immunities and privileges to the UPC and its judicial and other staff. 

So where are we now in the UK on ratification and what happens next? The requisite Scottish legislation has been passed, meaning that the only outstanding legislation before the UK can ratify the UPC Agreement is the Unified Patent Court (Immunities and Privileges) Order 2017.  This statutory instrument was passed by the House of Lords earlier this week, and now requires the approval of the Privy Council.  This may be up for consideration by the Privy Council at its next meeting - anticipated to be in February 2018. 

Wednesday, 13 December 2017

The ILO rules reinstatement of Board of Appeal member, but EPO resists

There was a major development last week in the saga of the suspension of the member of the Boards of Appeal of the European Patent Office, which, however, still has failed to bring the affair to a conclusion.

To recap the tale which has been dragging on for three years now, a member of the Boards of Appeal was suspended in December 2014 by the President of the European Patent Office, M. Battistelli, pending investigation of various allegations, including dissemination of defamatory material. This caused an outcry, because it is not the President, but the Administrative Council, that has disciplinary supervision over Board of Appeal members. The Administrative Council however confirmed the suspension, and then in October 2015 additionally decided to reduce his salary by half. 

The IPKat, in common with most news sources, has up until now not named the Board of Appeal member concerned, although the EPO briefed his nationality some time ago, enabling his identification as Patrick Corcoran – who was apparently the only Irish member of the Boards of Appeal. This has now been widely reported, and so the IPKat sees no need to continue with the anonymity. 

Mr Corcoran requested a review of both the original suspension decision, and of the decision to reduce his pay. Both requests were rejected, and these rejections were appealed to the Administrative Tribunal of the International Labour Organisation (available here). The ILO-AT is the only body competent to hear employment disputes from the EPO, which, as an international organisation, is generally exempt from national jurisdiction. Partly because of the large number of the EPO-related cases, the ILO-AT has a huge backlog, and so can take many years to reach decisions. 

It was therefore rather surprising that last week the ILO-AT released its decisions relating to the two suspension decisions taken by the Administrative Council (here and here). 

The decisions are in substance very similar, and are worth reading in full. Operating on principles of procedural economy, the ILO-AT has only ruled on matters sufficient to dispose of the cases. Therefore, while taking no decision in relation to many of the aspects raised, the ILO-AT has considered that the decisions taken by the Administrative Council were fundamentally flawed, because they were based on an Opinion prepared by the President of the EPO, pursuant to Article 18(1) of the Rules of Procedure of the Administrative Council. However, since M. Battistelli was one of the people allegedly defamed by Mr Corcoran, he had a conflict of interest in the matter, according to the ILO-AT, and should not have been involved in the disciplinary proceedings. 

The ILO-AT therefore concluded: 

“In the present case, there is a conflict of interest on the part of the President. It stems from the fact that the alleged serious misconduct, with which the complainant was charged, might reasonably be thought to have offended the President specifically, directly and individually. This situation, by itself, casts doubts on the President’s impartiality. Considering the whole situation, a reasonable person would think that the President would not bring a detached, impartial mind to the issues involved. The argument raised by the President in his opinion to the Council (CA/C 6/15), quoted above, namely that pursuant to the applicable rules the President was acting within his competence and had the power and duty to take all necessary steps to ensure the smooth functioning of the Office, is immaterial. The question of a conflict of interest only arises if the official is competent. Accordingly, the question of competency is not an answer to a charge of a conflict of interest. Hence, the Administrative Council erred in not finding that the President had a conflict of interest in the matter. In this situation, in accordance with the provisions in force, the Administrative Council should have sent the matter back to the next most senior official to exercise authority instead of the President, who was precluded from exercising authority because of his conflict of interest.” 

The ILO has therefore set aside the suspension decisions, and, in addition to ordering payment of lost pay plus interest, payment of moral damages (€25,000) and costs (€10,000), has ordered that “The complainant shall be immediately reinstated in his former post”. 

This has already been extensively reported (here, here, here and here). 

The problem is, however, that Mr Corcoran has not been reinstated. As further reported by the Irish Times, when Mr Corcoran went to the EPO “last Thursday afternoon he was refused admission and was told the ILO’s judgments had not yet been implemented”. 

This is however perhaps not as simple as it may appear. Because the appealed suspensions were not the end of the matter. The Administrative Council repeatedly sought, and failed to achieve, from the Enlarged Board of Appeal, a proposal for Mr Corcoran’s removal from office. That is the only manner, according to Article 23(1) of the European Patent Convention, that a Board of Appeal member can be sacked while in service. But Board of Appeal members are appointed for 5 years, and their appointment can be not renewed. Tucked away in the Report on the 152nd meeting of the Administrative Council of the European Patent Organisation (available here) from 28 and 29 June 2017 is the innocuous-looking paragraph: 

“The Council also decided to reappoint 12 members of the Boards of Appeal, and not to reappoint any other person, hence following the reasoned opinion of the President of the Boards of Appeal. It further agreed to the procedure for designating the deputy of the President of the Boards of Appeal in the future, and took note of the intended procedure to handle after-service activities of former board members.” 

The phrase “and not to reappoint any other person, hence following the reasoned opinion of the President of the Boards of Appeal” is understood by Merpel to mean that the new (and first-ever under the new arrangements for the governance of the Boards of Appeal) President of the Boards of Appeal has proposed Mr Corcoran’s non-reappointment and the Administrative Council has accordingly not reappointed him. This seems to leave him in legal limbo – if the EPO declines to readmit him, Mr Corcoran may have to appeal yet again to the ILO-AT in regard to this latest decision. 

The EPO’s reputation continues to be tarnished by a number of employment disputes, of which this is only the most high profile. The IPKat hopes that under the next President (António Campinos, currently President of the EU IPO takes over as President of the EPO next year) a more orderly work environment conducive to the examination of patents will be established.

Please keep in mind the Comment Moderation Policy when you comment (use a pseudonym and be civil). Also, you can reach Merpel by email at

Tuesday, 12 December 2017

Never Too Late: If you missed the IPKat Last Week!

Missed out on the IPKat’s latest a couple of weeks ago? Not to worry, the 172nd edition of Never Too Late is out to help you catch up!

[Week ending 26 November]

Time came for EMA relocation: and the winner is...Amsterdam! Guest Kat Eibhlin explains what happened at the polling stations.

Kat Neil dwelt in the fashion world to honour one of its most notable representatives in In memoriam: Azzedine Alaïa, the King of Cling (and what it tells us about the fashion industry).

Another national chapter post GS Media judgment. Kat Friend Theodoros Chíou tells us that Athens Court of Appeal applies CJEU GS Media linking decision and interprets 'profit-making intention' restrictively.

The Paris Tribunal, deciding on a copyright case held that Damages awarded for the ‘loss of opportunity’ to commercialise photographs following infringement. Although, as Kat Mathilde explains, the basis for this conclusion is not really to be found in the judgment.

Lost their marbles? When can you register a geographical name as a trade mark? Mermeren v Fox. Guest Kat Rosie reports on the dispute between the two marble companies and whether Sivec can be considered an indication of geographical origin.

Kat Friend Danny Friedmann reported for us about the fact that Sir Robin Jacob calls for System 2 thinking for patent law in an intriguing lecture.

Bad news for some businesses in Florence as Kat Eleonora reports that Florence court prohibits unauthorized commercial use of David's image, as this is incompatible with the Italian Cultural Heritage Code. The link to the decision and more info were provided by Eleonora on a later post here.

Weekly Roundups: Thursday Thingies

Kat found scouting in the new EMA location

[Week ending 3 December]

What better news on a Monday as one relating to party sports? In Clash of the beer pongs - Breakthrough Funding Ltd v Nearby Media Ltd, Guest Kat Rosie takes her shot into the red cups!

In the framework of the Qatar diplomatic crisis, Kat Friend Riyadh Al-Balushi tells us that WTO establishes panel to examine Qatar’s complaint against UAE.

What's next for trade marks in the UK and EU? Report on JIPLP/GRUR trade mark conference by Kat Friend Natasha Rao. The conference, moderated by IPKat’s own Eleonora, discussed the implication of the 2015 EU TM Regulation, recent case-law and Brexit.

Important developments in copyright! Kat Eleonora first swiftly informed us about the CJEU decision in BREAKING: CJEU rules in that the making available of copies of TV programmes saved in the cloud must be authorised by rights owner and then analysed and commented on the decision in The VCAST decision: how to turn a private copying case into a case about communication/making available to the public.

Be prepared to suffer the consequences if you are caught infringing a patent in France. Guest Kat Mathilde reports on a Supreme Court case which allows for public condemnation in France: patent infringers can be ‘named and shamed’…within reason.

Kat Friends Oliver Löffel and Birgit Clark report on the fact that BGH rules on international jurisdiction of German courts in EU trade mark cases. The BGH held that an overall assessment has to be carried out to determine the first infringing act.

The AmeriKat reports on the much awaited communication on SEPs. In EU Commission sets middle course for SEP licensing in Europe she lists the major takeaway points and reports a snarky comment by Merpel.

In the intricate world of joint authorship, a light of guidance arises In Claim of joint authorship fails in the Florence Foster Jenkins case Guest Kat Mathilde discusses the outcome of the case and lists the knowledge deriving from it in Judge Hacon’s 10 (+ 1) commandments on joint authorship under UK copyright law. A new era has begun!

UK House of Commons committee progresses final stages of UPC ratification, reports Kat Friend Alex Robinson. The possibility of ratification of the UPC in the UK before the end of the year may become reality.

Kat Friend Alex Woolgar generously reported for us on the two-day INTA Berlin event. Here are his reports: INTA Brand Authenticity Conference (Report 1): Building brand value via ethical and sustainable credentials; INTA Brand Authenticity Conference (Report 2): Building brand value via ethical and sustainable credentials and INTA Brand Authenticity Conference (Report 3): Building brand value via ethical and sustainable credentials.

A few days back, the AmeriKat talked about the MSD v Teva decision but only a rough translation was available. Now, thanks to a Kat Friend: Now available!: English translation of Dutch Supreme Court decision in MSD v Teva highlights UK Supreme Court's Actavis decision

And lastly, since finals season is fast approaching, Kat Eleonora provided a very handy guide on Student essays: how to write a good piece?

Weekly Roundups: Around the IP Blogs!

Image credit: ackab1 (


Never Too Late 171 [week ending Sunday 12 November] 
 Düsseldorf Court of Appeal in SISVEL v Haier publishes "guidebook" to SEP litigation under Huawei/ZTE | Swiss Supreme Court weighs in on K = Na | Beware the special requirements of software protection in Brazil | The protection of vehicles using trade marks and registered designs - London Taxis vs Scooters |  Who is going to win the big EU Commission SEP licensing battle - "use-based" or "licence to all"? | Is TRIPS preventing vulnerable countries from accessing basic drugs? The case of South Africa |  The New Intellectual Property of Health | Research Handbook on Intellectual Property in Media and Entertainment | When the cutting edge technology passes you over: The "winner takes it all" (and it ain't your home town) | Can a film be released without mention of the name of its director? | Saturday Sundries | [week ending Sunday 19 November] Birss J in Accord v Research Corporation Technologies attempts to cut the red tape on the right to claim priority | Looking for answers on ANSERA | Speech from European Judges Forum: But Sir Robin, let's be frank, we will put (just to be short), in Milan the Central Court... | Special interview with Patricia Kelly, Director General of IP Australia | "Intellectual Property Arrangements: Productivity Commission Inquiry Report" | "Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements" | When public domain works meet trade mark law: Norwegian Industrial Property Office applies EFTA Court’s judgment and dismisses applications to register Vigeland’s artworks as trademarks | Event report: The private copying exception and the compensation of harm in a dematerialised environment | How far away is global trade secrets protection? US industry's call to action as EUIPO analyzes baseline data | IPIB: How competitive is your IP service firm? | Erasing Kevin Spacey: performers' rights to the rescue? | Around the IP Blogs! | Sunday Surprises

Never Too Late 170 [week ending Sunday 5 November]  What future for UK copyright after Brexit? Report on IPKat-BLACA panel discussion |  US patent litigation on the move again following In re Cray | Does the doctrine of equivalents apply to novelty? | Internet and Digital Media Law conference returns to London UNION-IP event: "IP - Past, Present and Future" | The Relevant Public and Likelihood of Confusion in Respect of Chinese Character Trademarks | GUI Goo for Chewy Chewing 1 How far to take user rights into consideration? Repair? | Bringing a counterclaim for patent revocation: not so fast in Singapore | SPC consultation - call for input | Linking in the US: is an embedded tweet an infringement of the public display right? | Katcall: Openings for GuestKats and InternKats! | Dutch Supreme Court in Merck v Teva holds that second medical use claims can be directly and indirectly infringed, no matter the type | The rise of "obvious to try" is over as Court of Appeal finds CIALIS dosage regimen patent obvious | Wednesday Whimsies| [week ending Sunday 29 October] Abanka DD v Abanca Corporacion Bancaria SA|IP Federation declares no role for IP disputes in proposed Hague Convention, while INTA takes a different approach | Book review: Grounds of the Immaterial - A Conflict-based Approach to Intellectual Property Rights |Teva v Gilead: Swiss court bashes ECJ on SPC "mess" | Book Review: Form in Intellectual Property Law | T 1201/14: EPC's substantive requirements for valid transfer of priority right surprisingly substantial | Qatar diplomatic crisis: “beIN Sports” and potential violations of the TRIPS Agreement – | Part 2 TV formats potentially eligible for copyright protection as dramatic works under UK law | Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017]       

Never Too Late 169 [week ending Sunday 22 October] From Alicante to Munich - the EPO appoints its new President I Waldemar Haffkine: Pioneer of plague vaccine and the "Little Dreyfus Affair" Another German decision questions reasonableness of GS Media presumption if generally applied I Another German decision warns against broad application of GS Media presumption for for-profit link providers I Letter from AmeriKat: Trade secrets long arms, NDAs go bust and sharing of passwords I the AIPPI's World Congress in Sydney : Report 13, Report 12, Report 11, Report 10, Report 9, Report 8, Report 7, Report 6, Report 5, Report 4 I Book Review: EU Intellectual Property Law and Policy I Book review: Intellectual Property Rights and Climate Change: Interpreting the TRIPS Agreement for Environmentally Sound Technologies I Intellectual Property Rights and Climate Change – Interpreting the TRIPS Agreement for Environmentally Sound Technologies I A defensive non-assert? Philips v Asustek and HTC I Recommendation on measures to safeguard fundamental rights and the open internet in the framework of the EU copyright reform I BGH gifts shape mark owners sweet victories I Standards, patents and competition law conference I New episode of copyright mini-series 'The Game is on!'

Never Too Late 168 [week ending Sunday 15 October] Book review--Create, Copy, Disrupt: India’s Intellectual Property Dilemmas | Freedom of Panorama: would it hurt architects? Survey among Italian-based architects says NO | The new unjustified threats bill – do's and dont’s| International Copyright Law returns to London| Retromark Volume II: the last six months in trade marks and Volume I| Book Review Times Two: GI at the Crossroads of Trade, Development, and Culture and GI - Global and Local perspectives|Does the retreat from internationalism mean the retreat of IP? |Event report: I3PM General Assembly 2017 at WIPO in Geneva |copyright and music 

INTA calling: The 2018 Ladas Memorial Award competition for paper on a trademark subject

For Kat readers with an academic bent, the following public announcement about the 2018 Ladas Memorial Award competition may well be of interest.

“The International Trademark Association (INTA) is currently accepting submissions of original papers on trademark law or a matter that directly relates to, or affects, trademarks for its 2018 Ladas Memorial Award competition. INTA’s Ladas Memorial Award is an annual international competition that is open to both students and professionals. INTA will award the authors of the top two papers in the student category and the top paper in the professional category. These papers will be considered for possible publication in The Trademark Reporter (TMR), INTA’s legal journal; publication will be subject to the TMR Committee’s editorial review and approval.

The award was established in 1995 in memory of Stephen P. Ladas, a distinguished practitioner and author, and is funded by Ladas & Parry, LLP, a law firm with offices in New York, Chicago, Los Angeles, Washington, D.C., London, and Munich. According to INTA CEO Etienne Sanz de Acedo—
"INTA’s Ladas Memorial Award recognizes original scholarly works that address relevant, timely, and emerging issues in the field of trademark law. In honor of the late Stephen P. Ladas, we acknowledge both students’ and professionals’ contributions of thought leadership and research on matters that directly impact trademarks, and we provide an opportunity to increase exposure to their important work."
Pursuant to the official rules and requirements, the papers will be judged on the following criteria: nature, breadth, and timeliness of subject(s) addressed, originality of subject and of thought, extent of research and scholarship, and quality of writing. Eligible students must be enrolled as either full-time or part-time law or graduate students. Professional authors may be legal practitioners, business professionals, and/or academics.

The student winners will each receive U.S. $2,500 and complimentary registration to the 2018 INTA Annual Meeting, which takes place in May. The professional winner will receive a set of Stephen P. Ladas’s three-volume treatise, Patents, Trademarks, and Related Rights, and complimentary registration to the 2018 INTA Annual Meeting.

The deadline to submit a paper is January 19, 2018. INTA will announce the winners in March 2018. To submit a paper, visit here. Please contact with any questions.”

It would be great to read in March 2018 that the winner is also an avid IPKat reader.

Photo by Herrfous (talk), who has released it into the public domain.

By Neil Wilkof

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