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

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 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'.

Thursday, 23 January 2014

Opting back

Trade mark protection may be secured in the European Union by designating it in an International application under the Madrid Protocol. The extension to the EU may fail, just as an ordinary application for a Community trade mark may fail, for many reasons - but a CTM is particularly vulnerable because of the possibility that there are prior national rights, such as an earlier trade mark, in one of the 28 Member States.

The procedure for an ordinary CTM application allows the applicant to convert (at no small expense) the application into a collection of national applications, omitting those Member States where there is a fatal problem. A trade mark owner who has designated the EU through the Protocol may choose to convert the designation of the European Union into either a national application filed directly with the Member States concerned (as would be the case with a directly-filed CTM) or a subsequent designation of those Member States under the Madrid system.  This is known as 'Opting Back'. Subsequent designations must be submitted on form MM16, and will bear the date on which the designation of the EU was recorded in the International Register (Rule 24 of the Common Regulations, as amended).  This enables the applicant to retain the cost advantages of the Madrid System, and reduces the effect of dependency and central attack for EU designations.

See WIPO Information Notice No. 2/2004, January 12, 2004. 

Expedition to Luxembourg

The memorable phrase used by Jacob LJ in Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2009] EWCA Civ 1022 at [25], (2010) 33(1) IPD 33003, [2010] RPC 7 (20 October 2009) to describe a reference to the Court of Justice for a preliminary ruling on the interpretation of a point of European Union law.

Thursday, 9 January 2014


The nature of the tests to be applied in the European Union in determining whether a trade mark is barred from registration because it is devoid of distinctive character, descriptive, or generic (Article 3.1(b) to (d) of the Directive, Article 7.1(b) to (d) of the Community trade mark regulation). The mark has to be considered in the light of all the circumstances, including crucially the context of the goods or services for which it is to be registered, not in the abstract. Case C-299/99, Philips Electronics BV v Remington Consumer Products [2002] ECR I-5475, para 59 and 63.