Uk Review Of Inventive Step; Audi Ctm Application

posted a banker's complaint on the ruling of the OHIM Second Board of Appeal on the registrability equally a Community merchandise grade of Audi’s slogan “Vorsprung durch Technik”. Patentanwalt Dr Robert Harrison writes:

"The OHIM determination states that the appeal is rejected for goods inward all classes except inward course of report 12 (Vehicles). Audi received registration inward course of report 12 because their slogan Vorsprung durch Technik is well-known, equally was confirmed past times the Office inward an before illustration (CTM 621 086). For all other classes (9, 14, 25, 28, 37, 38, 39, 40, 42) the determination of the Examiner to turn down the grade was confirmed".

Many thanks, Rob, from a grateful audience of clueless kitties when it comes to unusual languages.

Strong Words From The 2Nd Board

The OHIM Second Board of Appeal has condemned the OHIM Opposition Division’s practices regarding oppositions which are inadmissible nether r.18 CTMIR.

Cabouchon applied to register CABOUCHON every bit a CTM for goods inwards Classes 14, xviii in addition to 25. Doring opposed the application based on her High German CABOUCHON give-and-take mark, registered for Classes 14, xviii in addition to 20, registration No 396 10 653. The opposition was rejected past times the OHIM Opposition Division, which institute that although the Opposition Division had been told that the opposition was based on a give-and-take mark, Doring after submitted a registration certificate which showed a device mark, rather than a give-and-take mark. The Opposition Division thus institute that Doring had failed to substantiate its before right, in addition to therefore, the opposition based on the before correct was non well-founded. Doring appealed.

The appeal was allowed. By providing the certification in addition to registration discover of the mark, Doring had sufficiently identified the mark. However, it was the Opposition Division’s conclusion to require Doring to render proof that she had used her score that arrive for existent criticism. Said the Second Board of Appeal:

This is clearly a illustration inwards which the refund of the appeal fee is justified nether Rule 51 CTMIR. The contested conclusion was based on a set down on which the opponent was never given a risk to comment. That breach of the correct to move heard amounts to substantial procedural violation inside the important of Rule 51. H5N1 farther unsatisfactory facial expression of this illustration is that the Opposition Division was manifestly quite willing to pose the opponent to the inconvenience of submitting proof of role of the score on which the opposition was based in addition to submitting ‘further facts, testify in addition to arguments’, fifty-fifty though – on the sentiment ultimately taken past times the Opposition Division inwards the contested conclusion – zip that the opponent did or said after the death of the opposition menstruum could cause got enabled the opposition to succeed. This illustration shows that at that topographic point is a pressing ask for the Office to reconsider about of its practices. If the Office considers that an opposition is incurably impaired past times a formal defect, it should cause got a conclusion to that final result at an early on phase instead of causing the parties to waste matter their fourth dimension submitting testify in addition to legal declaration on the core of the opposition. That, after all, appears to move the philosophy underlying Rule xviii CTMIR.

, e'er the inexpensive sensationalist, was quite excited when he saw such potent words. Seriously though, the Board’s betoken seems in addition to so obvious that it’s rather worrying that the Opposition Division didn’t figure this i out for itself.

Ip Pot Pourri

IP sole practitioner’s meeting: the date

For the avoidance of confusion, the IPKat wishes his readers to know that the sole practitioners’ coming together at the Crown Tavern is on Th 16 Feb (i.e. next week) together with NOT Th 9 February (i.e. tomorrow). apologises for whatever confusion.

Seems similar the IPKat's non the solely confused truthful cat (right)


OHIM rules on registrability of Vorsprung durch Technik


The OHIM Second Board of Appeal has ruled on the registrability equally a CTM of Audi’s slogan “Vorsprung durch Technik”. The determination appears to accept something to produce amongst whether the grade is distinctive since many goods are connected to applied scientific discipline together with something to produce amongst acquired distinctiveness. Also, vehicles inward Class 12 seem to accept been treated differently from the other goods applied for. More than this the IPKat cannot tell y'all because he doesn’t speak High German – the solely linguistic communication that the determination is available in.

News from the British Library

The British Library is launching a novel extended Business together with Intellectual Property Centre in March. The Centre already gives access to lots of lovely IP-related reference materials, the Business together with Intellectual Property Centre together with next the refit, it volition host a novel detailed (free) serial of talks on diverse aspects of IP together with delineate organization from the betoken of persuasion of delineate organization people.

volition select y'all farther details when this happens, precisely inward the meantime, y'all tin dismiss gorge yourself on the BL’s comprehensive listing of IP links at http://www.bl.uk/patents. says anything that increases world agreement of IP is to last supported.

The Modern Constabulary Of Patents; Ohim Boa Liberty Again

suggested that Boards of Appeal at OHIM, the business office that grants too administers the Community merchandise mark, were non exclusively gratuitous too independent. This suggestion, having received both hostile and cynical responses, instantly enjoys the back upwards of Dave Landau (UK Patent Office) who writes:

"The respond re the seat of the BoAs too their "independence" has already been given past times the CFI inward Procter & Gamble v Office for Harmonisation inward the Internal Market (Trade Marks too Designs) (OHIM) [2003] ETMR 43:

"19 The Court notes at the outset that the Boards of Appeal are composed of members whose independence is ensured past times the fashion of appointment, past times the duration of their term of business office too equally good past times the rules governing the practice of their functions. Furthermore, for certain provisions of Regulation 40/94 governing the physical care for earlier the Boards of Appeal guarantee, inter alia, the parties' rights of defence.

20 However, the Boards of Appeal cast component division of the Office, which is the potency responsible for registering merchandise marks nether the atmospheric condition seat downwardly inward Regulation 40/94, too equally good contribute, inside the limits seat past times that regulation, to the completion of the internal marketplace (Case T-163/98 Procter & Gamble v OHIM (BABY-DRY) [1999] E.C.R. II-2383, paras 36 too 37).

21 In that regard, it follows from BABY-DRY, paras 38 to 43, that in that location is continuity inward damage of their functions betwixt the diverse departments of the Office too that the Boards of Appeal enjoy, inward particular, the same powers inward determining an appeal equally the examiner. Thus, piece the Boards of Appeal taste a broad compass of independence inward carrying out their duties, they establish a subdivision of the Office responsible for controlling, nether the atmospheric condition too inside the limits seat downwardly inward Regulation 40/94, the activities of the other departments of the direction to which they belong.

22 Since a Board of Appeal enjoys, inward particular, the same powers equally the examiner, where it exercises them it acts equally the direction of the Office. An activeness earlier the Board of Appeal hence forms component division of the administrative registration procedure, next an "interlocutory revision" past times the "first department" to behavior out an examination, pursuant to Art.60 of Regulation 40/94.

23 In the low-cal of the foregoing, the Boards of Appeal cannot hold out classified equally 'tribunals'. Consequently, the applicant cannot properly rely on a correct to a fair 'hearing' earlier the Boards of Appeal of the Office".

Look What Happens...

...when yous catch http://www.wipo.org.uk/.

Commission Objects To Collecting Societies

A Europa press liberate reports that the European Commission has sent a tilt of objections to CISAC (the International Confederation of Societies of Authors as well as Composers) as well as the private national collecting societies inwards the EEA that are members of CISAC. H5N1 tilt of objections is a formal pace inwards European Union antitrust proceedings, which triggers a two-month menses inwards which the recipient tin defend itself inwards writing or asking an oral hearing earlier the Commission.

The Commission feels that CISAC as well as the collecting societies may hold upwards inwards breach of Art.81 of the EC Treaty, which outlaws anticompetitive agreements. In particular, the Commission alleged that provisions of the CISAC model contract, as well as the contracts implemented at national grade past times its members may hold upwards inwards breach when inwards comes to internet, satellite transmission as well as cable retransmission of music. Three fundamental problems are identified:

1. authors tin solely transfer their rights to the collecting gild inwards their abode country, as well as non to the societies inwards other Member States;

2. those seeking a licence must utilization hence solely from the collecting gild inwards the province inwards which they are based, as well as fifty-fifty then, the licence volition solely comprehend that jurisdictions;

3. the run a jeopardy of “network effects” i.e. a spider web of anticompetitive contracts that self-perpetuates, as well as makes is impossible for novel collecting societies to instruct into the market.

wonders if maybe in that place is a conflict betwixt objection one as well as objection 2. He has problem envisaging a province of affairs inwards which interests of authors as well as the interests would-be licensees would converge when it comes to the number of determining as well as collecting royalties.

Patent Purpose Initiative: A Cynic Writes; Sale Of Goods Past Times Network Non Like To Carry Services

posted a spider web log on the United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland Patent Office's surprise launch of a consultation newspaper on the role of inventive footstep inwards patent law. The postal service concluded:

"Merpel wonders why this maiden has come upward at this fourth dimension from the United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland Patent Office. It's unlikely that the United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland authorities would consider footling to a greater extent than or less amongst an internationally accepted norm for patentability if no other jurisdictions had the same intention”.

here]? And if hundreds of judgments of the finest human minds etc receive got non brought a universally satisfactory Definition inwards but i jurisdiction (the UK, never take away heed Federal Republic of Federal Republic of Germany in addition to the Netherlands) what does the United Kingdom of Great Britain in addition to Northern Ireland of Britain in addition to Northern Republic of Ireland Patent Office promise to attain – except, am I also cynical, satisfying a Minister that they are seen every bit doing something ..? The CIPA Patents Committee volition right away await at it in addition to dozens of fine brains at the toll of £[BIG FIGURE] per hour's lost earnings volition come upward up amongst something … only for it to go shelved and/or ignored past times judges. There's a lot to go said for the ’49 Act – in addition to that is non but because I grew upward amongst it …".
What a cheek! OHIM doesn't receive got to apply Castilian representative law

notes but i Community merchandise score conclusion from the Court of First Instance (CFI) today. That's Case T‑202/03, Alecansan, SL v OHIM, CompUSA Management Co. Essentially, CompUSA applied to register figurative score on the left every bit a Community merchandise score for diverse computer-related goods in addition to services inwards Classes 9, 37 in addition to 42, the latter beingness retail shop services inwards honour of figurer goods. Alecansan opposed the application inwards relation to Classes nine in addition to 37, citing its before registration of the figurative score on the right, registered for 'transport; packaging in addition to storage of goods; go arrangement’ inwards Class 39. The Opposition Division in addition to the Board of Appeal both rejected the opposition on the reason that, despite the near identity of the marks, at that spot was no similarity whatsoever inwards honour of the skilful in addition to services of the respective parties. Alecansan appealed to the CFI.

The CFI dismissed the appeal.

At the hearing Alecansan pointed out that inwards regulation at that spot is no connector betwixt go services listed inwards Class 39 in addition to information technology goods inwards Class 9. However, it argued, at that spot is a connector betwixt its carry services in addition to information technology goods of the merchandise score applied for. Since CompUsa sold information technology goods on the internet, it needed to utilization goods carry services inwards gild to larn those goods to ultimate purchasers. Without such carry services CompUSA could non pursue its business. Alecansan's services in addition to those of CompUSA were so complementary inwards nature. This beingness so, at that spot was similarity betwixt the goods in addition to services at issue. This ingenious plea was rejected.

So also was the minute business office of the appeal, concerning the failure to bring into concern human relationship Castilian national case-law on likelihood of confusion. Alecansan argued that, since earth targeted past times the 2 marks consisted of average Castilian consumers in addition to the relevant marketplace was the Castilian market, Castilian case-law concerning the likelihood of confusion betwixt the signs should receive got been taken into concern human relationship past times the Board of Appeal. Under that case-law the identity of the names of the 2 marks results inwards their ‘incompatibility’, fifty-fifty when the goods related to the signs inwards dispute are different, they belong to 2 different classes of the Nice Classification (Classes 29 in addition to 30) in addition to at that spot is no human relationship betwixt them, since the likelihood of confusion on the marketplace is evident. The CFI was unimpressed. It said:

"56 According to the commencement recital inwards the preamble to Regulation 40/94, the role of the Community merchandise score is to enable the products in addition to services of undertakings to go distinguished past times identical way throughout the entire Community, regardless of frontiers ...

57 Given the unitary nature of the Community merchandise mark, the Community merchandise score regime is an autonomous scheme amongst its ain ready of objectives in addition to rules peculiar to it, in addition to applies independently of whatever national scheme .... Accordingly, the validity of the Board of Appeal’s decisions must go examined solely on the reason of the relevant Community legislation, that is to state primarily Regulation 40/94 ...

58 As a result, OHIM cannot go leap past times a conclusion given inwards a Member State according to which where the 2 marks are identical inwards advert they are ‘incompatible’ fifty-fifty if the goods in addition to services covered past times the signs inwards inquiry are different. That is in addition to so fifty-fifty if such a conclusion was adopted nether national legislation harmonised amongst Directive 89/104 ...".

thinks this is precisely right. If Alecansan's submission was correct, holders of before Castilian registrations would go greatly advantaged over owners of before registrations inwards other European Union Member States whose courts had correctly applied the by in addition to large accepted norms of European Union merchandise score law. Merpel agrees: this is but some other bleat that tin go crossed off the listing of spurious arguments for no-hope litigants.

CompUSA here
MedUSA here