Intellectual Property Law - Essay Example

? PART A There are three sets of secnarios where trade mark can be considered to be infringed under “section 10 of the 1994 Trade markts Act. “ Wherea plaintiff(P) establish that the defendant (D) is employing an analogues sign for analogues products or services – Article 5 1(a) / Section 10(1) . Where P can establish that D is employing a similar or analogues sign as regards to similar or analogues products or services and hence , it may result in confusion among consumers. Article 5 1(b) / Section 10(2) Where P establish that D is employing a similar or analgoues sign and this result in unfair benefit of P’s mark or injuring its repute or disitncitve character withoud due cause. Article 5.2 / Section 10(3). (MacQueen et al 2011: 624). In “L’Oreal v Bellure” case, the main issue was that whether “look-alike” scents and pack marketed by the defendants violated the registered signs owned by the plaintiff under section 10(3) of the Trade Marks Act of 1994. (Horton 2011). In this case both UKs High Court and CJEU found that some of the scent bottles and packaging employed for ‘look-alike” perfumes contravened the registered trade marks as the defendant enjoyed an unjust benefit of the reputation or character of the registered trade marks. The court observed that the magnitude of the resemblance was intentional. The defendant attempted to “wink at” the premium brand’s packaging. The scents preferred as comparativeness, which were famous brands due to their extensive advertisement. (Horton 2011). The defendant by infringing the perfumes derived advantages from such advertisement and sponsorship of the expensive perfumes. Thus, the benefit for the expenses incurred for sponsoring, maintaining and improving a specific trade mark has been enjoyed by the defendants. This results in “free raiding “and thus amounting in enjoyment of unfair benefit. (Horton 2011). In Google France v Louis Vuitton and Interflora Inc, three respondents alleged that usage of trade marks, especially in the AdWords service by Google was itself a contravention. It was alleged that the entry of their trade mark names by the users of the internet in the search engine of the Google which activated the display under the caption “sponsored links” of connection to, as regards to Vuitton, sites presenting replication of products of Vuitton and as regards to Thonet and Viaticum, of connecting to the trade marks of their respective competitors. In each case , the row begun from the usage , as keywords in reference service of the internet , of marks which match up to trade marks , without approval from the owners of these trade marks. Before ECJ, the distinct question was that whether Google can bank upon the exemption under Article 14 of Directive 2000/31, which offers exemption for hosting for “information society services,” CJEU remitted the case back to the domestic court and held that the usage of trade marks by Google in the AdWords service could not be regarded as an infringement. (Roncaglia & Sironi 2011:170). In L’Oreal case, the main focus was on the commercial benefits derived by the defendants instead of damages to the business of the trade mark owner. There is no necessary to establish any harm or confusion among consumers, the business rivals might still derived advantages from the substantial investment made by the trade mark owner in establishing his brand in the market. Thus, the plaintiff has to establish that the defendant has derived a commercial benefit from the familiarity of his mark by demonstrating a linkage with the famous mark through use of a similar or identical sign. (Horton 2011:550). The art.5.2/ art.9 (1) (c) was related by CJEU in their verdict and stated that a trade mark owner can safeguard his mark against any misuse whenever there is chance for infringement but also can proceed against the defendant when the mark’s other features are impacted like any warranty of the quality of the products or services and those of advertisement, communications and investment. (Horton 2011:551). One of the main questions in Interflora v Marks & Spencer was that when and whether the usage of trade mark as a keyword may result in contravention or whether there is any infringement when it impacts the function of a mark, namely warranty for eminence of the product, communication, investment and advertisement can also be prevented by art.5. (2)/9(1) (c). (Horton 2011:555). The recent decision in cases like L’Oreal & Google France show how function of trade mark can not be limited to essential function but also include modern functions like “advertising and investment”. And how the ECJ although recognised this modern function but delay in mentioning them until the case of interflora. Section 10 (1) covers three main functions namely , essential , investment and advertisment function. D use of a sign must impact or is expected to impact the funcitns of the trade mark especially the essential function of promising to consumers the origin of the product or services. In Interflora and L’ Oreal , the ECJ was of the view that the protected functions are not restricted to the “ essential functions “ but also include the “investment function” and “ advertisting funtion.” In L’Oreal and in Google France , ECJ observed that P is having every right to stop D’s usage of its sign if it “ adversely impacts the owner’s use of its mark as an instrument of commercial strategy or as a factor in sales promotion. In Interflora , ECJ held that P is entitled to stop D if he uses his trade mark as a keyword if that is usage is likely to have an adverse impact on the investment functions of the trade mark. Thus, in the all the three cases illustrated above, the CJEU was of the view that though the legal protection under Trade mark Act was limited to preventing imitation that misleads consumers on this point but in contemporary days, a trade mark is regarded as an expensive asset in its own right and needs efficient safeguard on larger area including investment, advertisement and essential function. PART B The EUs “Information Society Directive 2001/29/EC “ empowers its member countries to include a special right to permit or to refuse either explicit or indirect or permanent or temporary replica by whatever way and in every guise , either in part or in whole of any copyrighted creations. “Infopaq International v Danske Dagblades Forening [2010] FSR 495” is a case relating to not the republishing of headlines but the case of extraction of texts from the critique appeared in a newspaper. In this case, ECJ ruled that some segregated sentences or even some portion of sentences in the text may be eligible for protection under copyright law. No distinction was made by the ECJ as regards to works or parts of works. Following the lines of Infopaq International case , UK court in” Newspaper Licensing Agency Ltd and others v Meltwater Holding BV and others”, it was held that the customers of a commercial on-line media monitoring service which did not have a license from the newspaper publisher has perpetrated contravention of the copyrights of the publisher in receiving and using the service. Thus, on 26 November 2010, the UK court was of the view that headlines appearing in a newspaper were capable of being interpreted as literary works under the copyright law. Since UK is a Member State of EU and due to this, there should be conformity of UKs domestic legislation with that of EUs directive and also the findings of EU courts will also be binding in UK, the UK Court held that headlines appearing in the newspaper were capable of being safeguarded by copyright provisions following the decision made by CJEU in Infopaq case. (Simpsons.com 2010). In “Newspaper Licensing Agency Ltd (NLA) v Meltwater Holdings [2011,”,] the Newspaper Licensing Agency (NLA) in UK initiated litigation in High Court against the Meltwater that Meltwater customer should obtain a license from NLA. Meltwater was of the view that there was no need for its customers to have a license as it was holding the same. In this case, Justice Proudman viewed in November 2010 that by not obtaining the license, the customers of Meltwater are contravening copyright of the publisher. Further, Proudman was of the view that headlines of newspaper could be regarded as literary works and hence, copying the excerpts from an article could result in infringement of copyright. Hence, if a customer of Meltwater who clicks the link offered by Meltwater could be liable for copyright provision infringement. (Wade 2011) “As per section 16(1) of the Copyrights, Designs and Patents Act 1988 of UK”, the privilege of the copyright owner is said to be infringed if the work is copied. As per seciton 16 (3) (a) , the said infringer should have either copied a substantial part or the whole work.Thus, the said infringer must have either copied at least a substantial part or the complete work of the copyrighted work. Thus, the interpretation of substantial part is footed upon not on a qualitative basis but on a qualitative basis. (Fawcett & Torremans 2011:130). However , earlier, UK courts are reluctant to hold that there is an infringement when only few words or ideas or headlines are reproduced .In “Ladbroke Football Ltd v William Hill Football Ltd [1964] 1 WLR 273” case, customers of the defendant used to receive betting coupons every week. The Plaintiff started to shipping out betting coupons which almost corresponding to defendant betting coupons. Lord Reid observed that there was infringement of copyright in the coupons and the plaintiff infringed the copyright as it had reproduced the major part of coupons. (Torremans 2007:37). In Baigent v Random house case, the court held that there is no copyright infringement in this case as infringement cannot be extended to facts ,information, theories , facts and themes but can be extended to arrangement , selection and compilation. (Sparrow 2010: 68). It was held by CJEU in “Infopaq International A/S v Danske Dagblades Forening” that an operation happens during a data capture practice where just 11 words were extracted from the copyrighted work, and this resulted in reproduction as defined in art.2 of the InfoSoc Directive if the contents that were reproduced were the opinion of an author through his intellectual creation. Initially, the court was of the view that the concept of either “reproduction in part” or “reproduction “has not been defined in InfoSec Directive. However, CJEU was of the view that following the decision in “Rafel Hotelses,” such notions must be explained in respect of context and wording of art.2 of the InfoSoc Directive. (Rosati 2011 :251) In “NLA v Meltwater Holdings”, it was held that reproduction of short texts and newspaper headlines unauthorisedly constitute copyright infringement. In this case, the court was of the view that newspaper headline may comprise not only a substantial part of a literary work but also as a “free-standing copyright work.” Thus, the impact of the Infopaq verdict is that not necessarily substantial part but even a small part of an unique literary work may be safeguarded by the provision of copyright if it is established the hallmark of individualism mirage of the construction of the writer or writers of the newspaper article. In Infopaq case, even short texts from an article published in a newspaper can potentially be protected under copyright law. In this case , just eleven words from the newspaper article was held to have copyright protection as it relates to the intellectual creation of the author, which is proven to be the litmus test for the inventiveness of the work. In NLA case, the Infopaq rule was applied in UK and held that the headlines of newspaper were observed to be safeguarded by the copyright provision. NLA case also implies that if endorsed in the appeal that some article or book titles enjoy the protection under the copyright act thereby toppling the long-held observation against this in UK. Thus, in the future publishing / author contract, the ownership of the title of a book or other literary work requires to be addressed due to view held in NLA case. Thus , the interpretation of the Infosoc Directive already implemented by UK Courts in “NLA v Meltwater Holdings”, and UK courts are now have to radically to change to hold that even a partial taking now amounts to an infringement of a copyrighted work. PART C For very long time , English courts applied the literal approach which employs rules and cannons of inference , to find out the real intention of the parliament or the real meaning of words in a patent dispute. In “Black –Clawson International Ltd v Papierwerke Waldhof –Aschaffenburg [1975]” , it was held that the courts always tried to know the intention of parliament which is not quite correct but they are trying to find out the meaning of words which was employed by the Parliament. In other words , in the past , the English courts tried to give more significance to the literary meaning for claim construction.. After Catnic decision, the practice of claim construction as per old English rules as outlined by Lord Porter in “Electric and Musical Industries Ltd “hence no longer applicable. The verdict in “Kirin-Amgen v Hoescht Marion Roussel Ltd” will demonstrate an unarticulated bias towards perusing a literal construction of the patent claims. The verdict in Kirin is striking for their apparent trust upon and apparent reference to, dictionary meaning of the words in question when assessing the scope of a patent. (Ipo.gov.uk. 2011). It was observed in “Daily v Establishments Fernand Berchet and Others (1992)” that the approach of the court , especially in patent infringement cases is first to interpret the specification , employing principles of construction that are to be applied to every written instrument interpreted by the court . The judge in the above case was of the opinion that there must be a purposive approach followed in Catnic instead of literal approach. In “Glaverbel SA v British Coal Corporation”, it was observed that a patent is to be interpreted in a way it ought to have been carried over at the juncture of filing the specification by those who have expertise in the particular field and in construing this, the court may give due attention to Art 69 of the European Patent Convention (EPC). Aldous J, in “Assidoman Multipack” case, viewed that the purposive approach falls totally within the Protocol Guidelines on interpretation. The Protocol on Art 69 states that it shall not be construed so that the magnitude of the safeguard offered by a European patent is to be interpreted as that delineated by a literal meaning of the wordings employed in the claims , with the descriptions and the drawings being employed only to decide any vagueness. In “Monsanto & Co v Merck & Co”, a literal construction was held to be wrong. The proper ambit of an invention was to be established from the claim interpreting its width as explaining the stand between the using claims as a guideline and extremes of literal interpretation. Even if a literal interpretation was right, it should not be fitting when interpreted purposely under s 175 of the Patents Act 1977. Thus, the approach of construction is to navigate between the two extremes, coalescing into a reasonable magnitude of certainty for public and a fair protection for the patentee. (Murdie 2000:220). In “Catnic Components Ltd v Hill and Smith Ltd “, Lord Diplock viewed that a purposive construction should be extended to a patent specification instead of a purely literal one originated from extending to it the kind of careful verbal analysis. Now, the first sentence to the Protocol states that no literal approach is to be followed for interpreting indistinctness to the construction of patent claims where words were accorded their ordinary or natural importance of words thereby disregarding their background or context, unless they were unclear. The Catnic verdict is illustrated in a constructive term in the recent House of Lords verdict in Klrin – Amgen case where Lord Hofmann outlines that the approach followed by Lord Diplock is really convergent with the lines needed of the United Kingdom as the signatory of the EPC, but at the same time it also offers a counter to the literalistic inaccuracies of the past. (Fisher 2011:2). Hence, if Catnic scrutinised through the eyes of Kirin offers a path coherent with the Protocol, and further, is being construed as shifting the English Courts drift from their literalistic analysis held in the past. (Fisher 2011:2). In AGA Medical Corporation v Occlutech GmbH, the German Supreme Court condemned of an excessively wider approach to patent claim construction, which was followed by the German courts in the past. It actually reiterated the vital significance of the claims in deciding the ambit of safeguard of a patent, as is needed by Article 69 of EPC. In this case, the German Supreme Court has taken into consideration the drawings and descriptions, the scientific implication that should be given by a skilled person and has now aligned with findings of both the Netherlands and UK courts. (Marks & Clerk UK 2011). Thus, I fully agree with the statement that here remains an unarticulated bias towards literal claim construction by English courts, especially after the verdict in, AGA Medical Corporation and Catnic, now English courts have emphasised that a purposive construction should be extended to a patent specification instead of a purely literal one originated from extending to it the kind of careful verbal analysis. List of References Fawcett J & Paul T. (2011). Intellectual Property and Private International Law. Oxford: Oxford Publishing Press. Fisher M. (2011) A Case-study in Literalism? Dissecting the English Approach to Patent Claim Construction in light of the Occlutech v AGA Medical. Intellectual Property Quarterly Horton A. (2011) Functions of a Trade Mark and when is an Advantage Unfair? European Intellectual Property Review 9, 551-558 Ipo.gov.uk. (2011). Manual of Patent Practice. [online] available from www.ipo.gov.uk/practice-sec-125.pdf >[ accessed 8 January 2012] MacQueen H L, Vaelde C & Laurie GT. (2011). Contemporary Intellectual Property: Law and Policy. Oxford: Oxford University Press Marks & Clerk UK. (2011), Germany Falls into line or Claim Construction. [online] available from [accessed 8 January 2012] Murdie A. (2000) Q&A on Intellectual Property Law. London: Routledge Taylor & Francis Group Roncaglia P L & Sironi G E. Trade Mark Functions and Protected Interests in the Decisions of the European Court of Justice. Trade Mark Reporter, Vol.101, 147-184 Rosati E. (2011) The Effects of Infopaq Decision. European Intellectual Property Review. Simpsons.com.au (2010) Copyright Protects Newspaper Headlines in the UK. [online] available from < http://www.smpsons.com.au/copyright-protects-newspaper-headlines-in-the-uk/> [accessed 7 January 2012) Torremans, P. (2007). Copyright Law : A Handbook of Contemporary Research. London: Edward Elgar Publishing. Sparrow , AP.(2010). The Law of Virtual Worlds and Internet Social Networks. New Delhi: Gover Publishing Ltd Wade A. (2011). The Tangled Web of Copyright Law. [online] available from http://www.guardian.co.uk/media-tech-law/tangled-web-of-copyright-law > [accessed 7 January 2012] Read More