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

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.

Tuesday, 8 October 2013

Extended copyright

When copyright terms increased on 1 January 1996, the new terms were applied to existing copyright works. All works that were still in copyright on 31 December 1995, including works in which copyright would have expired on the stroke of midnight that day, had copyright extended where the new rules on copyright terms gave a longer term.

Revived copyright

When the term of copyright protection in the UK (and many other countries of the then European Community) was increased in 1995, copyright had already expired on existing works where some of the new, longer term still remained. The works of people who died between 1925 and 1945 were affected: James Joyce, Thomas Hardy, Kenneth Grahame, Edward Elgar, Gustav Holst, the list was long and very distinguished. Copyright was revived where a work was protected in another EEA state under that state's legislation relating to copyright and related rights. As Germany in particular had a longer copyright term than that in the UK for many works, this led to a number of works being brought back into copyright in the UK.

Where copyright was revived, transitional provisions and savings protected those who were exploiting or who wanted to exploit such a copyright work in the future. By the end of 2015, they will have run their course. These covered:
  • Doing anything in pursuance of arrangements made before 1 January 1995 does not infringe revived copyright;
  • Issuing copies to the public made before 1 July 1995, which were made when copyright did not subsist, does not infringe revived copyright;
  • Anyone can use a work in which copyright has been revived as of right, subject only to payment of a reasonable royalty to the copyright owner (which can be determined by the Copyright Tribunal where there is no agreement); and
  • Doing something that would infringe copyright at a time where it is not possible by reasonable inquiry to ascertain the name and address of the copyright owner does not infringe revived copyright. 
In Sweeney and Anor v. MacMillan Publishers Ltd and Anor [2001] EWHC Ch 460 (22nd November, 2001) the estate of james Joyce, who died in 1941, took action over a new ('reader's', as if it could have been for anyone else) edition of Ulysses. For some reason, the author and publisher had not availed themselves of the licensing of right provisions, and consequently were infringing.