The art of writing is the art of discovering what you believe.
Gustave Flaubert

Tuesday, 27 January 2015


A clever way of manipulating the priority system in international trade mark law. Described by Tim Satzmann in the Duets blog here.

Monday, 26 January 2015


What's the point of writing something when it has already been said so well by someone else? This paragraph (there is more that you can read there) is reposted with his kind permission from Howard Knopf's Excess Copyright blog:
The hyphenated spelling of “trade-mark” had become something of an – ahem – trade-mark for Canada. It was a bold proclamation of independence and innovative thinking when Bob Kelly - an arcane and erudite veteran of the Department of Justice from a bygone era – came up with this bright idea. That hyphen was inserted in 1993 and served a useful purpose, since many people were confused between the American/WIPO spelling ("trademark") and the British spelling ("trade mark"), which the Brits still use. After all, isn’t the purpose of trade-marks law to avoid confusion? Canada had earlier used the British spelling. So - we are now following the American lead...Hopefully, this capitulation will appease the Americans and they will back down on term extension, prevention of parallel imports, repealing fair dealing, jail terms for petty infringers, ACTA implementation, the TPP and other aggressive efforts. As if!
Once upon a time, I was persuaded by a friend that the UK should move to making 'trade mark' a single word, drawing an analogy with the way 'copy-right' had gone. The relentless incoming tide of American cultural imperialism has since caused me greatly to regret ever entertaining such a view, and that Canada should have succumbed (even if the prizes mentioned in Howard's final sentence above might provide some justification) is most regrettable.


An expression defined by HHJ Birss QC in Yell Ltd v Giboin & Ors [2011] EWPCC 9:
For those without the benefit of a Scottish education, a numpty is a derogatory expression referring to an ignorant stupid person.
Includes an author who imagines that a reviewer will necessarily find something positive to say about his work. In intellectual property caselaw, it must rank alongside 'geek' and the associate term, 'android'.

Wednesday, 12 November 2014


User-generated content: material created by users of an online service and uploaded to (for example) a website. An increasingly important class of material that may be protected by copyright.

Friday, 6 June 2014

Pioneer patent (US)

A patent disclosing a function so novel that the patent enjoys a broad range of equivalents, under the US Supreme Court's decision in Westinghouse v Boyden Power Brake Co. 170 U.S. 537 (1898).
The Court said there that the term 'is commonly understood to denote a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art'. A sort of super-inventive step, then. The electrical telegraph and the telephone are often cited as examples. Perhaps the Dyson twin-cyclone vacuum cleaner ought to be on that list too.

Trade mark

I started thinking, in an idle moment as I drank my first (and, so far, only) coffee of the day, about the meaning of the phrase 'trade mark', or if you will the word 'trademark' (but I won't). First, I tried to remember (successfully) what the Russian for 'trade mark' is: товарный знак (tovarniy znak), which intrigued me when I first added it to my vocabulary because of the relationship between trade (товарный) and comrade (товарищ), a word which nowadays has no place in even an extensive Russian vocabulary. And now I find that it's similar (in appearance and sound, but not meaning) to твёрдый знак, the hard sign (ъ) of the Russian version of the Cyrillic alphabet (equivalent to the ultra-short vowel 'yer' in Bulgarian, it seems, which goes some way to explaining the different spellings in Russian and Bulgarian of the word for 'court', in the judicial not romantic sense). That знак can mean sign or mark is hardly surprising: its phonetic near-equivalent in English is amusing. Well, it is if you are easily amused.

Of course, the Trade Marks Act 1994 defines a trade mark with some precision. It means a particular type of sign. The 1938 Act defined it as a type of mark. A  mark is something that appears on a surface, whether something put there deliberately which you'd want to keep or something that got there by accident and you would prefer to wash away or wipe off. A sign is something wider than that, and the word has been used in religious and other contexts to denote something intangible, so the use of that generic word instead of 'mark' is consistent with the registrability under the (no longer) new law of sounds, smells, colours and other exotica. And equally знак serves as a word for a letter of the alphabet (perhaps not properly referred to as a letter) or punctuation mark, and a sign used to identify a business. I wonder whether exotic trade marks are registrable under Russian law? Given that it bears a fairly close resemblance to EU trade mark law, it seems quite likely.

Interesting as that might be (is it?), I am more interested in the first word of the phrase. In the definition of 'trade mark' in section 68 of the 1938 Act, the mark is 'used ... in relation to goods for the purpose of indicating ... a connection in the course of trade between the goods and some person having the right either as the proprietor or registered user to use the mark ...'. In the 1994 Act (and the Directive from which it is derived) a trade mark is a sign which is capable of distinguishing the goods and services of one undertaking from those of other undertakings. Interesting shift from considering the use of the mark to the function of the sign. No wonder there is such confusion under the 'new' law about 'trade mark use'.