Intellectual Property
Update No 3
This update contains detailed summaries of the following cases
• Sabaf SpA v MFI Furniture Centres Ltd and Meneghetti SpA on the test for
obviousness of inventions and patent infringement;
• Budejovicky Budvar Narodni Podnik v Anheuser-Busch Incorporated in the Court
of Appeal on revocation of trade marks on the ground of non-use for five years;
• KWS Saat AG v OHIM on the registrability of a single colour applied to goods as a
trade mark;
• Arsenal Football Club plc v Matthew Reed on whether a sign which operates as a
badge of allegiance rather than a badge of origin infringes a registered trade mark
and the position with respect to disclaimers used with trade marks.
There is also a description of some of the proposed changes to the Copyright, Designs
and Patents Act 1988 to implement those provisions in the Directive on copyright and
related rights in the information society relating to circumvention of technical
measures and electronic rights management information. There is also a mention of
the proposed changes to the Patents Act 1977 resulting, largely, from changes to the
European Patent Convention.
Other cases of interest are briefly noted together with legislative changes and other
items of interest.
Note: the case references IPLR are to a new set of law reports, Intellectual Property
Law Reports, published by EMIS. For details of these, please write to EMIS, 31-33
Stonehills House, Howardsgate, Welwyn Garden City, Herts AL8 6PU or by email to
[email protected] (website www.emispp.com).
Sabaf SpA v MFI Furniture Centres Limited and Meneghetti
SpA
[2002] IPLR 31, [2002] EWCA Civ 976, Court of Appeal, 11 July 2002.
Facts
Sabaf SpA (“Sabaf”), an Italian company, was proprietor of a UK patent for burners
for gas hobs. The patented gas burner had, in particular, solved two pre-existing
problems being (a) the fact that burners were tall and do not fit into slim cooker hobs,
and (b) the primary air which is mixed with the gas before it comes out of the burner
so that it contains sufficient oxygen to burn effectively was drawn from underneath
the hob unit. The patented burner was of low height and drew air from above the hob
unit and contained a radial mixing passage shaped so as to produce a Venturi effect to
mix the air and gas thoroughly.
It was alleged that the second defendant (“Meneghetti”, another Italian company)
made gas burners which infringed the UK patent. These were sold in the UK by the
first defendant (“MFI”). It had been argued that the second defendant infringed by
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being a joint tortfeasor with the first defendant or that it infringed by importing the
gas burners into the UK.
The contract of sale between the first and second defendant was ex-works and the title
to the burners and the risk passed to the first defendant immediately they left the
second defendant’s factory in Italy but the second defendant was responsible for
arranging transportation of the burners to the UK.
In the Patents Court, Laddie J found that Meneghetti’s gas burners infringed the
patent, that it had imported the burners into the UK but that it was not a joint
tortfeasor with MFI. However, he then held that the patent was invalid for lack of
inventive step, being obvious to a person skilled in the art. He described the invention
as a mere collocation, taking two pieces of known prior art and combining them
Sabaf appealed against the finding that the patent was obvious and that Meneghetti
was not a joint tortfeasor. Meneghetti cross-appealed against the finding that its
burners were within the scope of the patent and that it infringed by importing the
burners into the UK.
Held
Obviousness
The Court of Appeal noted that Laddie J had not applied the “Windsurfing” test, from
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.
The court did not think it essential that the Windsurfing test be used to test for
obviousness but noted that there were dangers in taking shortcuts to answer the
question and, in particular, the danger of hindsight.
The court held that there was no separate law of collocation and that putting together
two or more pieces of prior art may involve an inventive step, citing guidelines from
the European Patent Office which note that a combination of features can mutually
support each other in their effects to achieve a new technical result that is not obvious.
Kommerling/Profile member [1992] EPOR 98 was cited with approval. In that case,
the Technical Board of Appeal of the European Office held that:
• the existence of two problems solved by the patented invention was obvious and
their perception did not confer an inventive step,
• the problems were independent and there was no combined effect, and
• the solution to each problem was obvious.
Peter Gibson LJ, giving the judgment of the court, also said that there was no
justification for modifying the Windsurfing test in the case of a collocation so that the
third step required that two pieces of prior art were treated as combined (the third step
is to identify what, if any, differences exist between the matter cited as “known and
used” and the alleged invention).
It was confirmed that the test for obviousness in section 3 of the Patents Act 1977
should be performed through the eyes of the person skilled in the art having the
relevant common general knowledge. If the invention is a collocation of two wellknown concepts, the question is whether it would be obvious to the skilled man, using
his common general knowledge, to combine those concepts. Referring to Sachs LJ in
General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at
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482, Peter Gibson LJ said that there was a difference between common general
knowledge and the state of the art. In the case of the former individual patent
specifications are not normally part of the common general knowledge. However,
some patent specifications may be so well known as to form part of the common
general knowledge. It may also depend on the nature of the art itself.
The Court of Appeal held that Laddie J had not applied the test imposed by section 3
properly and had not really dealt with the question as to whether there was a
relationship between the features of the invention and whether the combination was
obvious should then have been judged through the eyes of skilled man with his
common general knowledge. [Note: in Kommerling, the Technical Board of Appeal
used the test of looking at the invention through the eyes of a person skilled in the art,
on the basis of his general technical knowledge].
The Court of Appeal then applied the four stage Windsurfing test. It identified the
inventive concept, determined the common general knowledge of the person skilled in
the art, identified the differences between the invention and the prior art cited by
Meneghetti (four prior patents) and then decided that those differences, in the light of
the inventive concept, would not have been obvious to the person skilled in the art on
the basis of his common general knowledge. Therefore, the patent was valid.
Infringement
Taking a purposive approach to the interpretation of claim 1, the Court of Appeal held
that the Meneghetti burner fell within the scope of that claim, even though claim 1
was in terms of a “sleeve portion ... defining a chamber” whilst the Meneghetti
burner had a much shallower depression surrounding the gas injector.
Joint tortfeasance
To be a joint tortfeasor, there must be participation in a common design or a concerted
action with the primary infringer. The Court of Appeal held that the underlying
concept of joint tortfeasance was that the joint tortfeasor must be so involved in the
commission of the tort as to make himself liable for the tort. He must make the
infringing act his own. Although Meneghetti knew its burners were going to be
imported into the UK, it had not done enough to make the infringing act its own. It
had merely acted as supplier to a purchaser who was free to do as it wished with the
burners. Meneghetti was not, therefore, a joint tortfeasor.
Infringement by importation
Title to the burners and the risk passed to MFI in Italy. The Court of Appeal refused
to accept that the infringing act of importing a patented product into the UK could
extend to someone who (a) had no legal title or beneficial interest in the product, (b)
was not a joint tortfeasor by making the infringing act his own. Furthermore, the
Court of Appeal pointed out that the word used in section 60 of the Patents Act 1977
was “imports” not “causes to import”.
Thus, although the patent was valid, Meneghetti was not liable for infringing the
patent.
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Budejovicky Budvar Narodni Podnik v Anheuser-Busch
Incorporated
[2002] IPLR 29, [2002] EWCA Civ 1543, Court of Appeal, 29 October 2002.
Facts
The trade mark proprietor (BB) was a brewer of beers and had its establishment in the
Czech Republic. It sold its beer in the UK under the trade mark "Budweiser". The
applicant for revocation, Anheuser-Busch Inc (AB) was an American brewer which
also sold beer in the UK under the trade mark "Budweiser". In both cases, the beers
were frequently referred to as "Bud". AB and BB had a long history of disputes
relating to trade marks and passing off.
BB had a trade mark, "Budweiser Budbräu" in stylised form, registered in Class 32
for "beer, ale and porter". AB applied for revocation of the mark on the ground of five
years non-use. During that period BB had only used the words in block capitals as
part of a label in the form of a seal for bottle necks and on invoices. The hearing
officer at the Trade Marks Registry held that the use of the mark was use in a form
differing in elements which did not alter the distinctive character of the mark under
section 46(2) of the Trade Marks Act 1994 and he dismissed the application for
revocation. AB appealed to the Chancery Division and the judge allowed the appeal.
BB's appeal against this decision was the first of the two appeals heard by the Court of
Appeal. The second appeal was brought by AB in respect of BB's registered trade
mark comprising the word "Bud" in stylised form, registered in Class 32 for "beer, ale
and porter". AB had applied for revocation of the mark also on the ground of five
years non-use. The hearing officer dismissed the application, accepting that use of the
word on the packaging was genuine use and the judge in the Chancery Division
dismissed AB's appeal.
BB relied upon five forms of use, being use on packaging in the form "Bud-BudvarBudweiser" in dot matrix print, use of "Bud" on invoices in block capitals, use as part
of product codes, oral use by customers, use, in the form in which it was registered,
on promotional beer mats.
Held
The first appeal brought by BB in respect of Budweiser Budbräu was allowed.
For the purposes of section 46(2) of the Trade Marks Act 1994, in determining the
elements that make up the distinctive character of a trade mark, the assessment should
be made through the eyes of the Registrar. However, the Registrar would be mindful
to take account of the effect on the average consumer and would view the matter
through the eyes of the average consumer
In a mark which comprises a word or words and graphical elements (that is, a device
and word mark), the words may speak louder than the device, although that does not
necessarily mean that distinctiveness resides in the words alone. In the present case,
the use of "Budweiser Budbräu" in upper case on the neck labels was use in a form
differing in elements which did not alter the distinctive character of the mark and was
use for the purposes of section 46(2).
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Lord Walker said the test should be first to determine the points of difference between
the mark as used and as registered. The second stage is to decide whether those
differences alter the distinctive character of the mark as registered. Although the
average consumer normally perceives a mark as a whole and does not embark upon an
analysis of the various details of a mark, the Registrar uses his skill and experience to
analyse and assess the likely impact of the mark on the average consumer. However,
Lord Walker did express some surprise at the hearing officer’s finding that there was
use within section 46(2) but he said that the hearing officer had made no error in
principle and, therefore, his decision should stand.
The second appeal, brought by AB, in respect of the Bud mark was dismissed.
In Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV, 2 July 2002 the Advocate
General had suggested that the question is not whether someone is genuinely in a
trade and happens to use a mark in the course of that trade but, rather, whether that
person was conducting business under that mark. The Court of Appeal remarked that
it was unsatisfactory to rely on an opinion of an Advocate General before the Court of
Justice has given judgment. However, even if accepted as correct, that would not
affect the hearing officer’s views that the use of Bud on packaging was genuine use.
KWS Saat AG v OHIM
Case T-173/00, Court of First Instance, 9 October 2002
Facts
KWS Saat AG was a German company dealing in plant seeds It treated and sold seeds
that were coloured orange. The applicant filed an application for a Community trade
mark at the Office for the Harmonisation of the Internal Market (Trade Marks and
Designs) (“OHIM”) for registration of a shade of orange (standard reference HKS7)
in respect of:
“Treatment installations for seeds, namely for the cleaning, dressing, pilling,
calibration, treatment with an active agent, quality control and sifting of seeds in
Class 7.”
“Installations for drying seeds in Class 11”,
“Agricultural, horticultural and forestry products in Class 31”,
“Technical and business consultancy in the area of plant cultivation, in
particular in the seed sector in Class 42.”
It was refused under Article 7(1)(b) of the Community Trade Mark Regulation for
lack of distinctive character. The appeal to the Second Board of Appeal was dismissed
on the same basis. The applicant then appealed to the Court of First Instance.
The applicant had orally restricted the list of goods and services to just industrial
goods and services for Classes 7 and 11 and agro-industrial goods and services for
Classes 31 and 32. However, the applicant failed to follow the correct procedure and
this was refused as inadmissible.
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Held
It was held that the application could only proceed in respect of the services category
under Class 42.
Although the applicant treated and sold seeds coloured orange, it claimed that a large
number of rival manufacturers used their own colours, such as blue, yellow or red.
Some seeds were sold in coloured form only. The applicant also argued that orange
was an unusual colour for seeds and not the natural colour of the seeds. Because of
this consumers buying its seeds would know immediately where they had originated
from. The applicant disagreed with OHIM’s contention that the colour orange should
be kept free for others to use, saying that the colour was very rare in this particular
commercial field and rivals would have no need to use it. Red was the colour mostly
used for treating seeds rather than orange.
The view of OHIM was that, if a colour is to be capable of registration, the goods
must be seen to be capable of distinguishing the goods or services of one undertaking
from those of another without the help of additional features. It went on to say that
some seeds were naturally orange-coloured and that the orange colour only served the
purpose of informing the consumer that the goods had undergone some sort of
treatment. Thus, the colour was not an indication of origin. Furthermore, orange was a
commonly used colour for agricultural machinery.
The practice of OHIM has been to allow registration of colours or colour
combinations provided they are perceived as capable of distinguishing the goods of
one undertaking from those of another. However, colour or colour combinations may
serve a number of uses, such as technical or decorative, as well as an indicator of
origin of goods. OHIM noted that it would prove difficult to affix a word or figurative
mark on a seed because of its shape and size but the colour, per se, would be unlikely
to act as a badge of origin.
The Court of First Instance agreed with the decision of the Board of Appeal of OHIM.
In relation to Article 73 of Regulation No 40/94, requiring the OHIM to state the
reasons on which its decisions were based, the applicant argued that it was deprived
of a right to a hearing and of the chance to restrict the list of goods and services in the
application as it had not been informed of the reasons on which the decision was
refused. However, OHIM pointed out that Article 73 should be construed within the
meaning of the Community case-law, whereby the duty to give reasons varies
according to the nature and context of the registration in question. The Court of First
Instance considered the applicant’s arguments regarding infringement of Articles 73
and 74 and came to the conclusion that the Board of Appeal had acted correctly. The
applicant had been aware of the arguments and evidence to be examined by the Board
and could have aired its views earlier.
The Court of First Instance held that the plea alleging infringement of Article 7(1)(b)
of Regulation No 40/94 be upheld in relation to the services in Class 42 but rejected
this in relation to agricultural, horticultural and forestry products within Class 31 and
treatment installations in Classes 7 and 11. However, the Court disagreed with the
Board of Appeal’s assertion that registration of the sign would overly restrict a third
party’s use of orange for its own mark.
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NOTE: see also Viking-Umwelttechnik GmbH v OHIM [2002] IPLR 19 where the
Court of First Instance held that a combination of a commonplace shade of green and
a commonplace shade of grey lacked distinctive character.
Arsenal Football Club plc v Matthew Reed
[2002] IPLR 32, Case C-206/01, European Court of Justice, 12 November 2002
Facts
The Arsenal Football Club was proprietor of a number of registered trade marks for
clothing and sports footwear. Two of the marks were the words “Arsenal” and
“Arsenal Gunners” and another mark had the club crest with the word “Arsenal”
together with the club motto. Another mark was the cannon device.
Matthew Reed was a trader who had a stall near the Arsenal football ground. He sold
souvenirs and clothing, such as scarves bearing the club's trade marks. He tried to
make it clear his goods were unofficial and he had a large notice on his stall to that
effect.
The football club brought an action in the High Court for passing off and trade mark
infringement. As regards passing off, Laddie J held that the club had failed to show
confusion on the part of consumers as to the origin of Mr Reed’s goods. In terms of
the trade mark claim, Laddie J was unimpressed by the submission that use of a sign
in a non-trade mark sense still could infringe the trade mark He thought the
defendant's use of the marks was not as badges of origin, rather as badges of support,
loyalty or affiliation. However, as he had some doubt about this, he referred some
questions to the European Court of Justice (ECJ) for a preliminary ruling under
Article 234 of the EC Treaty.
Held
The ECJ first confirmed that the essential function of a trade mark is to distinguish the
goods or services of one undertaking from those of another undertaking such that the
consumer can, without confusion, identify the goods or services as being from a
particular undertaking. A trade mark guarantees that the goods to which it has been
applied are manufactured or supplied under the control of a single undertaking
responsible for their quality.
To ensure that this guarantee of origin is effective, a proprietor of a trade mark must
be protected against competitors who unfairly seek to take advantage of the reputation
of the trade mark by illegally selling goods bearing the mark or providing services
under that mark. However, the exclusive right conferred on the proprietor under
Article 5(1)(a) of the trade Marks Directive is justified only in respect of the limits of
Article 5. Therefore, the exclusive right does not extend to other uses of the mark
which do not affect the proprietor's interests, bearing in mind the essential function of
the trade mark. Thus, use for purely descriptive purposes does not infringe because,
per se, this does not affect the proprietor’s interests protected under Article 5.
However, in this case, the use is not merely for descriptive purposes.
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As the defendant's goods have the word “Arsenal” fixed to them, this suggests a
material link in the course of trade between those goods and the proprietor of the trade
mark. The defendant’s use of his disclaimer was insufficient to dispel this even if it be
assumed that a disclaimer can be relied as a defence for infringement. When the
goods were removed from the vicinity of the defendant’s stall, some consumers who
came across the goods after sale, might interpret the mark as indicating that the club
was the source of the goods. This could be, for example, where a scarf had been
bought from the defendant as a gift for another person.
If, in the circumstances, the use of the trade mark without permission is such that the
guarantee of origin may be affected, the fact that it is perceived as a badge of
allegiance, loyalty or affiliation to the proprietor of the registered trade mark is of no
consequence. If some consumers perceive the trade mark as indicating the origin of
the goods, a trade mark proprietor can rely on his rights to prevent such use.
Copyright - circumvention of technical measures and
electronic rights management information
Introduction
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001
on the harmonisation of certain aspects of copyright and related rights in the
information society is required to be implemented by Member States by 22 December
2002 at the latest. A draft SI has been prepared in the United Kingdom but, because of
the complexity of the changes, the DTI has recently announced that changes to United
Kingdom law will not be implemented until March 2003 at the earliest. This will
cause further headaches for the Parliamentary draftsmen as this will mean that there
will have to be provision for transitional arrangements between the required and
actual implementation dates.
Some very technical changes will be made to the Copyright, Designs and Patents Act
1988 in relation to temporary reproduction, communication to the public and the
distribution right. The position with respect to performers’ right will, in particular, be
clarified. However, it is in respect of the provision of adequate protection against the
circumvention of technical measures designed to prevent or restrict unauthorised acts
in respect of works or other subject-matter, and the provision of adequate protection
for electronic rights-management information that the changes will probably have
their greatest impact and these are the issues discussed below.
Technological measures to prevent or restrict unauthorised acts
Article 6 of the Directive requires Member States to provide adequate legal protection
against the circumvention of any effective technological measures designed to prevent
or restrict acts not authorised by the rightholder. This extends to all copyright works,
rights in performances, the publication right and the database right. At the present
time, the Copyright, Designs and Patents Act 1988 contains provisions to control
devices designed to circumvent copy-protection. However, this applies only in
relation to copyright works.
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Article 1 of the Directive prevents the application of Article 6 to computer programs
and the existing provision in section 296 (as amended) will be retained in its current
form for computer programs only, with appropriate modification. But, new provisions
will be required for other works of copyright, rights in performances and the database
right. This will be effected by inserting new sections 296ZA – 296ZD into the Act.
At the moment, a civil right of action is given to the copyright owner of any work,
copies of which have been issued to the public by or with the consent of the copyright
owner. The right applies in respect of anyone who makes, imports, sells, etc. devices
specifically designed or adapted to circumvent copy-protection and in respect of
anyone who publishes information intended to enable or assist persons to circumvent
the form of copy-protection used by the copyright owner. There is no remedy against
a person who only carries out the act circumventing copy-protection.
Section 296ZD will insert some new definitions into the Act. “Technological
measure” will mean any technology, device or component which is intended, in the
normal course of its operation, to protect a copyright work, other than a computer
program. Measures are “effective” if the use of the work is controlled through an
access control or protection process such as encryption, scrambling or other
transformation of a work, or a copy control mechanism, which achieves the intended
protection.
The new provisions will give concurrent civil rights to the person issuing or
communicating the copies to the public and the copyright owner or other relevant
rightholder against:
• persons performing acts of circumvention, knowing or having reason to believe
that is the effect of what they are doing,
• persons making for sale or hire, importing otherwise than for private and domestic
use, in the course of business selling, hiring or offering, exposing or advertising
for sale or hire or possession of or who distributes other than in the course of
business to such an extent as to prejudicially affect the copyright owner, any
device, component or product which has only a limited commercially significant
purpose or use other than to circumvent or which is primarily designed or adapted
to enable or facilitate the circumvention of the technological measures applied to
the work,
• persons who provide, promote, advertise or market a service, product, device or
component, the purpose of which is to enable or facilitate the circumvention of the
technological measures applied to the work, in the course of business or otherwise
than in the course of business but to such an extent as to affect prejudicially the
copyright owner.
These provisions are different to those already applying to computer programs.
Section 296 does not apply to devices having only a limited commercially significant
purpose other than circumvention. Furthermore, the latter right is very different to the
publication of information intended to enable or assist persons overcome copyprotection as under section 296. Another factor is that the latter two rights are
infringed regardless of any knowledge, actual or constructive, on the part of the
defendant. The only proviso is in relation to a claim for damages. For the civil rights,
existing provisions under copyright and database right relating to search and seizure,
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the presumptions and the withdrawal of privilege in respect of self-incrimination in
certain intellectual property proceedings are applied, as appropriate.
The proposed criminal offences for making, importing, selling etc (as set out above)
and promoting, advertising, etc are a serious matter. Search warrants and forfeiture
provisions will be included equivalent to those to be inserted into section 297A of the
Copyright, Designs and Patents Act 1988 by the Copyright, etc and Trade Marks
(Offences and Enforcement) Act 2002. The offences, set out in section 296ZB, as the
proposed section is currently drafted, will apply to copyright works. However, as the
definition of “technological measures” applies only to copyright works other than
computer programs, it seems that the offences will not apply to computer programs, a
strange anomaly. Moreover, the inclusion in the offences of the phrase “to such an
extent as to affect prejudicially the copyright owner” would seem to prevent the
offences applying in respect of rights in performances, the publication right and the
database right.
The offences will be triable either way with a maximum penalty on indictment of two
years imprisonment and/or a fine. The maximum on summary conviction will be three
months imprisonment and/or a fine not exceeding the statutory maximum. These
maximum penalties are less than those that will apply soon to copyright piracy, being
10 years and/or a fine.
The prosecution will not be required to prove mens rea for the offences but it will be a
defence for the accused to prove that he did not know and had no reasonable ground
for believing the device, product or component or the service provided enabled or
facilitated the circumvention of effective technological measures. This brings into
question whether the accused will bear an evidential burden or a legal burden and, if
the latter, whether this contravenes Article 6 of the European Convention on Human
Rights, an issue that came up in the recent Court of Appeal case of Roger Sliney v
London Borough of Havering, briefly reported below.
The use of technological measures to prevent unauthorised acts in respect of works or
other subject-matter could compromise some of the permitted acts. Therefore, the
Directive requires Member States to take measures to protect those benefiting from
certain of the exceptions and limitations mentioned in Article 5(2) and (3). The
government does not propose to do anything immediately but it will listen to
complaints from anyone prevented from taking advantage of the relevant permitted
acts. The Secretary of State may then take appropriate action by issuing directions
unless rightholders take appropriate voluntary measures.
Electronic rights management information
Article 7 of the Directive requires Member States to give adequate legal protection to
electronic rights management information. “Rights management information” is
defined as any information provided by rightholders which identifies the work or
other subject-matter, the author or any other rightholder, or information about the
terms and conditions of use and any numbers or codes representing such information.
Protection must be afforded against a person knowingly performing any of the acts
below without authority:
• removing or altering any electronic rights management information. or
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•
distributing, importing for distribution, broadcasting, communicating or making
available to the public works or other subject-matter from which such information
has been removed or altered without authority if, by doing so, the person
concerned knows, or has reasonable ground to believe, that by doing so he is
inducing, facilitating or concealing an infringement of any copyright, related
rights or database right.
The protection applies where the information is associated with the work or appears in
connection with the communication to the public or a work or other subject matter.
The government’s proposal is to insert a new section 296ZE into the Act, following
the language of the Directive closely. The right to bring a civil action is given to the
person issuing or communicating the copies to the public and to the rightholder, if
different. Their rights are concurrent.
The protection of rights management information is a completely new departure for
law in the United Kingdom and there is now much talk about DRMS – Digital Rights
Management Systems.
Key other provisions
Article 8 of the Directive requires that appropriate sanctions and remedies are
provided and that the sanctions, in line with TRIPs, are effective, proportionate and
dissuasive.
The government has given particular consideration to the danger of on-line piracy and
a new offence of communicating works to the public is proposed (and an equivalent
offence in respect of rights in performances). The mens rea will be knowledge or
having reason to believe that copyright would be infringed. The draft regulations do
not contain equivalent offences for the database right or publication right.
Article 10 requires that the provisions of the Directive apply to all works and other
subject-matter which are, on 22 December 2002, protected in the Member State
concerned. Article 10(2) states that acts concluded and rights acquired before 22
December 2002 are unaffected.
Some amendments are made to Directive 92/100/EEC (Rental right and Lending
Right and Certain Rights relating to copyright in the field of Intellectual Property (OJ
[1992] L346/61)). As a result, the duration of copyright in sound recordings is
modified to include a provision for expiry 50 years from the end of the calendar year
during which the sound recording was first communicated to the public.
Exceptions to rights in performances will be inserted in Schedule 2 to the Act
(permitted acts) to allow time-shifting and photographs to be made of television
broadcasts for private use similar to the equivalent permitted acts for copyright under
sections 70 and 71.
Summary
The introduction of criminal offences in respect of circumvention of technological
measures to prevent or restrict unauthorised acts is controversial and has echoes of the
problems raised by the US Digital Millennium Copyright Act 1998 and concerns over
the potential for interference with the right of freedom of expression.
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The Directive does not harmonise those aspects it deals with completely and there is
still significant scope for Member States to differ, particularly in the exceptions and
limitations on the rights of reproduction, communication and distribution. Although
much of copyright law should now be the same or equivalent across Europe, whether
a full scale harmonisation of copyright and related rights should be undertaken is a
moot point and views differ as to whether this would be desirable. It is in relation to
the permitted acts that differences are most notable. For example, in some
jurisdictions parodies do not infringe.
The changes will be far-reaching and many will be fairly complex. The first draft of
the Regulations has proved unsatisfactory in a number of respects and the government
has admitted that the Directive will not be implemented on time. A large number of
submissions have been made under the consultation exercise and it seems that a
significant re-write will be required. Consequently, the government has announced
that the Directive is likely to be implemented until at least 23 March 2003.
Consultation Paper on the Proposed Patents Act
(Amendments) Bill, The Patent Office, DTI, 29 November 2002
Changes to the European Patent Convention (EPC) were agreed at a conference held
in Munich in November 2000. A new text of the EPC was adopted on 28 June 2001,
referred to as “EPC 2000”.
The Patent Office consultation paper (available from the Patent Office website at
www.patent.gov.uk) outlines the proposed changes to the Patents Act 1977 to comply
with EPC 2000 and some further modifications intended to be made to the 1977 Act.
EPC 2000 is intended to come into effect 2 years after the 15th Contracting State
ratifies or accedes. At the moment four Contracting States have acceded.
Some of the changes to the EPC are noted briefly below.
Article 52(1) - Conditions for patentability
Article 52(1) EPC will be amended to bring it in line with the TRIPs Agreement to
make it clear that patents shall be available for inventions “in all fields of
technology”. This is unlikely to have any major impact on the scope of what is
patentable.
Article 52(4) - Exceptions to patentability: methods of treatment etc
This provision currently states that methods of treatment and diagnosis are lacking in
industrial application. It is proposed to modify this to make it clear that they are
simply excluded from patentability. This will be a change in language only rather than
substance.
Article 54(3) – Novelty
At the present time, European applications published after the date of filing of a later
application anticipate that later application in respect of States designated on both
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applications. This is changed to anticipation in all States, a slight widening of the
prior art.
Article 54(5) – Further medical use
Second and further medical use claims to a known substance or composition are
allowed at present. Claims have had to be expressed in a form known as “Swiss-type”
claims, for example, “Use of X for the manufacture of a medicament for the treatment
of Y”. This will be changed so that such claims do not need to be expressed in this
way.
Article 69 and its Protocol – Extent of protection (doctrine of
equivalents)
Article 69 and the Protocol concern the interpretation of patent claims. There is a
minor change to Article 69(1) from “determined by the terms of the claims” to
“determined by the claims”. This change was made because of inconsistencies
between the meanings of the phrase in the three official languages.
There are some changes to the Protocol on Article 69 is concerned, minor
clarifications are made but a substantial change is made by the introduction of a
doctrine of equivalents. When determining the scope of protection afforded by the
claims, due account is to be taken of equivalents to any element contained in the
claims. This is more in line with US patent law.
Article 79 – Designations
At the moment each State for which protection is sought must be positively
designated. In the future, all States will be deemed to be designated at the date of
filing. Thereafter, any designation may be withdrawn up until grant of the European
patent. This includes the possibility of withdrawing a designation on filing the
application.
Articles 105a to 105c – Limitation or revocation
A new central limitation and central self-revocation procedures will be introduced. At
the request of the proprietor, a European patent may be centrally limited by
amendment of the claims, or centrally revoked. This differs from amendment under
the EPC as it presently stands which is allowable only as part of opposition
proceedings.
Article 112a – Review by Enlarged Board of Appeal
There will be a new review procedure such that any person adversely affected by a
decision of the EPO Board of Appeal may apply, on certain specified grounds, to the
Enlarged Board of Appeal for a review of that decision. Any third party who has “in
good faith used or made effective and serious preparations for using” an invention
between a Board of Appeal decision invalidating a patent and the revival of a patent
by the Enlarged Board of Appeal will be protected.
Article 138 – Limitation of patent in national proceedings
This will give the proprietor the right to limit his patent by amendment of the claims
in national proceedings relating to the patent’s validity. In the United Kingdom, postgrant amendment has always been possible to limit the scope of the claims. However,
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it has been accepted in the United Kingdom that such amendment has been subject to
the discretion of the court or comptroller, as the case may be. This discretion will
have to be removed for European Patents designating the United Kingdom and it is
expected that it will be removed also for United Kingdom national patents.
Some other changes
Some but not all are a result of EPC 2000. One change may concern the
confidentiality of details of inventors, and there will be consideration to the position
of employees as regards compensation for inventions made for their employers which
are of outstanding benefit to the employers. Under the existing provisions in section
40 of the Patents Act 1977 not a single application for compensation by an employee
has been successful. The present requirement that infringement proceedings may be
brought before the comptroller only if both parties agree is likely to be changed so the
choice of whether to bring infringement proceedings before the comptroller of the
court is left entirely with the claimant.
Changes to the groundless threats action are also possible. An action for groundless
threats lies in respect of selling or stocking a product. The action is not available for
making or importing a product or using a process. There is concern that this might
hinder attempts to settle before litigation and may be against the spirit of the Woolf
reforms. It is proposed also to change the provision such that proceedings for
groundless threats will not be able to be brought for a threat made to anyone who is
alleged to be making or importing a product for disposal or using a process in an
infringing manner, regardless of what other potentially infringing acts that person may
be carrying, for example, where an importer then sells the product in question.
It is possible that post-grant reexamination may be introduced. This system is in place
in the United States and is particularly useful where some further prior art is
discovered after grant. It enables the validity of the patent to be considered without
the need for a full-blown legal action.
For full details and further proposed changes see the Consultation document.
Responses are required by 21 February 2003.
More cases of interest
Naomi Campbell v Mirror Group Newspapers
[2002] IPLR 33, [2002] EWCA Civ 1373, Court of Appeal, 14 October 2002
This was an appeal against the decision at first instance where the judge awarded
Naomi Campbell £3,500 damages for breach of confidence and for compensation
under section 13 of the Data Protection Act 1998. The defendant had published a
story about Naomi Campbell being a drug addict (something she had previously
denied) and included details of her treatment at Narcotics Anonymous and also
published a photograph taken of her as she left a meeting of Narcotics Anonymous.
As regards the “publishers’ defence” under section 32 of the Data Protection Act
1998, the judge held that it applied only to processing of personal data up to
publication and not thereafter. Section 32 provides exemption from parts of the Act
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including all the Data Protection Principles except the obligation to take security
measures in respect of personal data. The exemption applies if the data controller
reasonably believes that publication would be in the public interest and where the
processing is for the special purposes which are the purposes of journalism, artistic
and literary expression.
The Court of Appeal reversed the finding. It held that the public interest defence
applied as far as the breach of confidence claim was concerned. Where a person has
become a public figure, that does not allow publication of every detail of that person’s
private life. However, where a person had made a claim about her private life and that
was untrue, the public had a right to be told the truth.
In terms of data protection law, the Court of Appeal held that the section 32 defence
applied up to and after publication. The wording of the section certainly seems
ambiguous on that point but the court pointed out that, if the defence applied to
processing prior to publication, that could severely restrict the freedom of the press.
Publication of sensitive personal data would be likely to attract claims for
compensation under section 13 of the Act even though the publication might be
manifestly in the public interest, there being no public interest defence to a claim for
compensation. The section 32 defence applies, therefore to covert publication also.
The court held that publication of the defendant’s newspaper was part of the
processing activity within the scope of the Act. This is not beyond doubt as
processing caught by the Act is processing by automatic means. (The Act also applies
to certain manual records, being relevant filing systems and accessible records – a
newspaper would fall into neither of these). Actual distribution of newspapers is not
automatic processing (unless, of course, a newspaper is published electronically).
After the Court of Appeal decision, Naomi Campbell was rumoured to be facing legal
costs of around £700,000.
Roger Sliney v London Borough of Havering
[2002] IPLR 36, [2002] EWCA Crim 2558, Court of Appeal 20 November 2002
Roger Sliney was a trader who sold sportswear and clothing bearing registered trade
marks. The London Borough of Havering, in exercising its duties under trade mark
law, suspected that these were counterfeit and charged Mr Sliney with two counts of
possessing, with a view to gain for himself or another or with intent to cause loss to
another and with a view to selling, etc., goods to which registered trade marks had
been applied without the consent of the proprietor of the trade marks, under section
92(1)(c) of the Trade Marks Act 1994. Once the prosecution prove the elements of the
offence (or the other offences in section 92), the accused will be guilty unless, under
section 92(5), he can show that he believed on reasonable grounds that the use of the
sign in the manner in which it was used, or was to be used, was not an infringement of
the registered trade mark.
The trial judge held a preliminary hearing before a jury was sworn to decide two
questions raised. The first was whether section 92(5) placed a persuasive burden (that
is, a legal burden) on the accused or whether it placed an evidential burden on the
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accused. In the former case, the accused would have to prove his belief on reasonable
grounds on a balance of probabilities. In the latter case, he would simply have to
adduce sufficient evidence to raise an issue and, if he did, the prosecution would have
to prove beyond reasonable doubt that he did not have such a belief. The second
question was whether, if the provision did place a legal burden on the accused, that
was incompatible with Article 6(2) of the European Convention on Human Rights
(the presumption of innocence until proved guilty).
The judge decided that the provision did place a legal burden on the accused and that
it was not incompatible with the Convention. Mr Sliney appealed against those
findings.
The Court of Appeal confirmed that section 92(5) placed a legal burden on the
accused. The presumption of innocence until proved guilty was described in
Woolmington v Director of Public Prosecutions [1935] AC 462 as a golden thread
always to be seen in the web of English Criminal Law. However, that principle has
been accepted, even in Woolmington, to be subject to statutory exceptions. Section
92(5) was clearly such a statutory exception and used classic language to place a legal
burden on the accused. The Court of Appeal pointed to the great difficulty for the
prosecution if there was only an evidential burden on the accused. To this extent, the
Court of Appeal disagreed with the finding in the Court of Appeal in R v Johnstone
[2002] IPLR 10, EWCA Crim 194, in which the court held that section 92(5) imposed
an evidential burden only. However, this part of the judgment in Johnstone was
obiter.
As regards the European Convention on Human Rights, the Court of Appeal held that
section 92(5) was not incompatible. The essential elements of the offence were in
section 92(1) and the defence was in the way of an exception.
The Court of Appeal also held that section 92(5) could not be “read down” under
section 3 of the Human Rights Act 1998 to interpret the provision as placing an
evidential burden only on the accused.
The result, therefore, is that it is possible for a person who acted honestly to be
convicted under section 92 if his belief that a registered trade mark was not infringed
was not formed on reasonable grounds.
Legislative changes
The Copyright (Visually Impaired Persons) Act 2002 received Royal Assent on 7
November 2002. The Act inserts two new permitted acts into the Copyright, Designs
and Patents Act 1988 (new sections 31A to 31F). They are intended to facilitate the
making of copies (“accessible copies”) of copyright works in a form in which they
become accessible to persons with impaired sight or other physical difficulties, within
carefully drawn up limits. There is a “one-for-one” exception which allows a single
accessible copy of a copyright work (literary, dramatic, musical or artistic work or
published edition) to be made for personal use by a visually impaired person. That
person must have lawful possession of or be able to lawfully use the inaccessible copy
(that is, the original from which the accessible copy will be made). Educational
establishments and non-profit making bodies may make multiple copies to supply to
visually impaired persons. Accessible copies must not be commercially available. In
the case of multiple copies, the copyright owner must be notified within a reasonable
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time and a licence must be taken out where a licensing scheme exists. A
commencement order will be required to bring the Act into effect and this is expected
to be in Spring of 2003.
The Copyright, etc. and Trade Marks (Enforcement and Offences) Act 2002, noted in
Update No 2, was brought into force on 20 November 2002.
Other items
The Patent Office is planning to contract out some of its search and examination
functions. A draft statutory instrument was prepared on 4 November 2002, entitled
The Contracting Out (Functions in Relation to Applications for Patents) Order 2002.
It is intended to contract out some patent search to the Danish Patent and Trademark
Office and a small number of patent searches and examinations (and combined
searches and examinations) to the Netherlands Intellectual Property Office.
The Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(“OHIM”) will commence taking applications for Community designs soon. UK
applications may be filed with the UK Patent Office from 1 January 2003 and all
applications received up to and including 1 April 2003 will be given a filing date of 1
April 2003. The Community design is provided for by Council Regulation (EC) No
6/2002 of 12 December 2001 on Community designs, OJ L3, 5.1.2002, p.1.
In Menashe Business Mercantile Ltd v William Hill Organization Ltd [2002] IPLR
34, the Court of Appeal confirmed that, in terms of infringement of a patent under
section 60(2) of the Patents Act 1977 (supplying or offering to supply the means)
what was important to concentrate on was where, in effect, the use complained of was
carried on. Patents are territorial, however, placing part of patented apparatus out of
jurisdiction would still infringe if, the persons who made use of the invention were in
jurisdiction. In terms of a gaming system where the users were using their own
computers in the United Kingdom, the fact that the host computer was elsewhere was
of no significance. Punters based in the United Kingdom were using the invention in
the United Kingdom even though part of it was located in Antigua. Supplying persons
in the United Kingdom with CDs which enabled their computers to communicate to
the host computer would, if all other elements were present, infringe under section
60(2).
© David Bainbridge 2002
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