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LICENSING EXECUTIVES SOCIETY
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The Faces Behind the WebBy Roger Tully, Inglewood Computer Services Limited
The design, programming and maintenance of the LES Britain and Ireland web site (http://www.bi.les-europe.org/) is the responsibility of Inglewood Computer Services Limited (ICS). The company is run by Dr Roger Tully and his wife Bryony from their home in an idyllic setting on the shores of Lake Ullswater in the English Lake District. Roger is responsible for customer relations, project management, programming and maintaining the two servers used by the company: Unix and Windows NT. He is also responsible for research and the development of interactive web site features such as search engines, databases and e-commerce. Bryony is responsible for graphics, animation and multimedia and has designed the new look for the LES Britain and Ireland and the LESI web sites. She is currently working on a new design for the LES Europe site. The LES Britain and Ireland site contains:
To encourage members and non-members to visit and use the web sites they need to be as informative and user-friendly as possible. In this respect members are asked for feedback with regard to changes and improvements. Comments should be directed to Barry Quest at bquest@wilsongunn.com. Roger Tully read chemistry at Queen's College, Oxford followed by a doctorate investigating the synthesis of novel anti-cancer agents. He worked for 23 years at the Roussel Laboratories in Swindon, where latterly he was Head of Molecular Modelling. In this role he was responsible for the use of powerful computers to visualise the three-dimensional structure of proteins thought to be associated with various diseases and to design novel molecules to interact with a particular protein, thereby potentially inhibiting or curing the disease. It was in this role that he learnt about PCs and other operating systems. The desire to return to the fells of his native Cumbria coupled with the stress of working as a senior manager in an international company eventually persuaded Roger to resign. After a seven month back-packing adventure around the world he and Bryony moved to the Eden Valley near Penrith, renovated a barn and set up Inglewood Computer Services in the spring of 1995. The timing could not have been better for in the summer of that year Compuserve introduced affordable access to the Internet. Seizing the opportunity to promote ICS on the World Wide Web. Roger quickly became proficient in html programming and set up a web site. He soon realised that this service could be offered to other businesses and so the web design company was created. Five years on ICS is responsible for over 100 web sites for clients varying from small local businesses to large companies and organisations such as Wilson Gunn, Lloyd Loom, Pirelli and LES International, LES Europe and LES Britain and Ireland. So that we may keep our web site as up-to-date as possible all members, and particularly Chairs of Regional Committees, should email Roger, our web consultant, at ics@cumbria.com with any changes or additions as soon as possible. Top President's Diary
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Gill Grassie, Partner,
Maclay Murray & Spens, Glasgow
reports:
The Scottish decision will greatly strengthen the hand of the owners of well-known brands who are involved in a battle to stop importers who seek to bring trademarked goods into the European Economic area without the brand owner's consent. This decision is a major blow to importers of so called 'grey goods' who will now have to recognise that such activities are unlawful, certainly so far as Scotland is concerned. Scottish judgements in the cases of Davidoff SA v Scottish-based M&S Toiletries and JOOP! GmbH v M&S Toiletries Limited follow hot on the heels of recent judgements of the European Court of Justice in the Silhouette and Sebago cases. The Scottish judgements are also of particular note because the Scottish Judge has chosen not to follow the recent English High Court decision on precisely the same point. The judgement in England was handed down by Hugh Laddie J in the case on Zino Davidoff SA v M&S Toiletries Limited. Whilst the Scottish Judge indicated that he did not have to concern himself with the English law on implied consent and could distinguish these cases on that basis, he recognised that there were issues of EC community law which were important and which might conflict with the English decision. The Scottish cases involved a consignment of the popular JOOP and DAVIDOFF perfumes which were stopped by Customs officers at Grangemouth in July 1998. The perfume had been imported from Singapore and was stopped at Customs because part of the consignment had been tampered with and bar codes had been removed. The bar codes are required under European law and are seen by manufacturers as a vital safety feature of their product. European and domestic trademark rules allow brand owners to prevent importation of batches of trademarked goods into the EEA where these goods were originally destined for sale elsewhere. If, however, the goods are put on sale in any country within the EEA by the brand owner or with his consent, the trademark owner's rights can no longer be used to stop this. The issue in these cases was whether or not there was any consent. Parallel importers operate by obtaining goods (often designer or luxury goods) at a lower price in one market and then importing them into a second market, where those goods can be sold at a higher price. The price difference is such that the parallel importer can make a profit and sometimes still undercut the manufacturer's price in the second market. The legislation prevents the legal import of those goods if the first market is outside, and the second market is within, the EEA. Ms Grassie added: 'While on a superficial level the consumer group arguments seem attractive, the underlying logic supports the brand owners. Brand names and designer brands meet a consumer desire in the market. Without a return on their investment in marketing, research and development, quality control costs and improvements, brand owners would stop investing in their brands which would ultimately disappear. This would ultimately deprive consumers of the choice between paying for the exclusivity of the high quality branded items or paying less for non-branded alternatives. By choosing a branded item a consumer confirms the value of that brand and in return for the trust in the product is assured consistency and reassurance of product quality.' In this important Scottish judgement, the key question before the Court was whether the manufacturer and trademark owner (or its licensees) could have been said to have consented to sale of the perfume in the EEA and therefore to the import. Distinguishing his judgement from that of Justice Laddie in the English case Davidoff v A & G Imports the Scottish IP Judge Lord Kingarth held that in the circumstances the necessary consent to import could not be implied in favour of the importers. In response to their argument that the trademark owner should have done more to demonstrate their lack of consent, the Judge stated:
The question of the meaning of 'consent' in terms of the EU Directive on trademarks is currently before the ECJ although no final decision is expected for at least 18 months. The judgement of the Scottish Court in this case has been eagerly awaited by solicitors representing the parties to the ECJ references.
Guido Baumgartner of Lancaster Group on behalf of the owners of the trademarks 'JOOP' and 'DAVIDOFF' said:
Gill Grassie, solicitor for Zino Davidoff SA and JOOP! GmbH in the Scottish case said:
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E-COMMERCE REGULATIONOFTEL and the OFT have issued a consultation document in which they anticipate future technological and market related developments within the e-commerce sector. The report also considers the likely effects such developments will have on competition and whether any regulatory changes need to be made. The Oftel/OFT provisional conclusion is that the current regulatory regime is 'sufficiently generic and technology-neutral to enable future e-commerce cases to be dealt with satisfactorily' and so propose no changes. OFTEL and OFT would like small business, industry and consumers to comment on the consultation document and express their views on the development of the e-commerce sector generally. The report and details of how to submit any comments are available at: Report by Ben Goodger, Chair of the IT and E-Commerce Industry Committee |
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Blooming in IrelandMary Swords, president of LES Ireland, reports on the section's successful Spring into the Millennium: On April 11 Professor Robert (Bob) Clark of University College Dublin (UCD) gave a very interesting and well-supported talk on 'Recent Developments in Character Merchandising'. His talk was delivered in his usual lively and cogent style and brought back many memories to those present, including chairperson Mary Swords, of the contract law lectures at UCD in days gone by! Bob summarised leading UK, Canadian and Australian case law and ended his talk with reference to the Australian 'Metallica' case. Interestingly, although there is very little reported Irish case law on the subject, one of the attendees was able to refer to a 'Metallica' order given in an unreported judgement by an Irish Judge in relation to a Chris de Burgh concert held in Dublin some years ago. Professor Clark's talk will shortly be made available to LES members on the LES website (http://www.les-europe.org) and to Copyright Association of Ireland members on their web site. Professor Clark is Associate Professor of Law in the Faculty of Law, UCD and course director of the LLM degree in Commercial Law also at UCD. He is the author of text books on Irish data protection law and contracts and co-author with Shane Smyth, a LES member, of 'Intellectual Property Law in Ireland', published by Butterworths. He has been a member of The Legal Advisory Board since 1985, advising the European Commission on information technology issues. He is currently chairperson of The Copyright Association of Ireland. LES Ireland's AGM and Annual Lunch is to be held on Bloomsday, 16 June, at The Conrad Hotel in Dublin. A traditional Bloomsday breakfast may include the innards of beast and fowl washed down with Ebon ale, on this occasion the LES Irish Section Committee have not been brave enough to offer this as the lunch menu and have opted for a more traditional choice! The speaker on this auspicious day will be Kieran Comerford, Managing Director of Comerford Technology Management Ltd. He will speak about 'Recent Developments in R&D Management'. This talk will be of particular interest to members advising or engaged in businesses which involve development of R&D as the Irish government has a number of initiatives, available through Enterprise Ireland, to encourage R&D in Ireland. Kieran Comerford set up his company in 1988 having worked for the Institute for Industrial Research and Standards, which eventually became part of Enterprise Ireland. He has worked in the area of R&D and Intellectual Property for 25 years and was a founder member of LES Britain & Ireland. He has twice served as Chairman of the Irish Section. He is one of the course leaders for the Introduction to Innovation and R&D Management training programme run on behalf of Enterprise Ireland. He is also a member of the Enterprise Ireland R&D management consultants panel. Kieran qualified as an Electrical Engineer from UCD in 1965 and subsequently obtained a MBA in 1978. |
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Top 16th June 2000 LES Ireland AGM and Lunch on Bloomsday at the Conrad Hotel DublinBloomsday celebrates the first time that James Joyce 'walked out' with Nora Barnacle, 16 June 1904. The day was so special to him that he set his novel Ulysses entirely on that date! Each year Dublin celebrates the wanderings and musings of Leopold Bloom and Stephen Dedalus on that day. The celebrations run from 10 - 18 June. Visitors are encouraged to wear Edwardian style costume. For further information, including the full programme of events please contact: The James Joyce Centre, Dublin, email: joycecen@iol.ie Top LES Welsh BranchThe LES group in Wales is very small and has not been particularly active as a group. We comprise a mix of members from professionals such as lawyers and patent agents through to the Patent Office and a small number of companies. It is perhaps the companies that we need to attract as members in order to be a more active and effective group. One of our most active members is the Welsh Development Agency (WDA) which provides support to companies and academic groups through its Technology & Innovation Team, a core part of its Business Development Department. The WDA is headquartered in Cardiff with five regional offices in Swansea, Treforest, St Asaph, Newtown and Aberystwyth providing support on a local basis. Underpinning the Technology & Innovation programme is the Wales Regional Technology Plan, which was developed following consultation with over 1,000 organisations throughout Wales. Technology Services focus on the following key activities:
The Technology Team comprises:
In addition the WDA hosts the EC funded Wales Innovation Relay Team which helps organisations with trans-European technology transfer and to access EC R&TD funding. Work with academic institutions includes promotion ofCentres of Expertise and provision of seven academically based Commercial Managers who are funded jointly with the Higher Education Funding Council for Wales. The WDA also manages an academic spin-out programme and various funds to encourage development of Technology based businesses. Further details of the services available from the WDA can be found on its web pages: www.wda.co.uk. As a group we would like to increase our membership and become more active. If anyone has any ideas or suggestions please give Heather McNabb a call on 029 20 477537 or email her on: heathermcnabb@eversheds.com. Top News Report LES (Scottish Branch) Seminar'Model Programmes - or Petty Protection'
The LES (Scottish Branch) held their most recent meeting at the 'Upper Chambers' of the Chambers Bar, in Glasgow on 10 May - A suitably named venue for learning a little more about various developments in the law from the US and Europe regarding the protection of software and the implications for e-commerce. In light of the drive by Scottish Enterprise National (Scotland's national economic development agency) to increase 'connectivity', build and promote Scotland as the best place for e-commerce, and accelerate the ability of Scottish businesses to participate effectively in the e-economy, this seminar was of interest to a wide audience. We were therefore delighted to welcome nearly 40 people including representatives of Scottish Executive, patent attorneys and lawyers, small businesses, the Universities, the NHS and larger corporate organisations. Sheila Keir. Patent Attorney from Cruikshank & Fairweather, did a sterling job in introducing the complex subject-matter, bringing the audience up to speed with statute law and recent key court decisions from US, Europe and the UK. Sheila's efforts were particularly appreciated as she had stood in at the last minute for a colleague, David Moreland, who had been in a car accident. (David, a keen LES supporter, is bruised but with nothing broken - we wish him a speedy recovery). The second speaker, Ron Marchant, Head of Patents and Designs at the UK Patent Office, made intriguing comments about the future path for the UK Patent Office, and its interaction with government offices from other developed countries in determining a system with some degree of harmonisation globally. It was also interesting to learn about his attendance at recent International meetings and his support for a European IP Court. Ron and Sheila both addressed even more issues at the question session and answered in robust style. The overall conclusion was clear - the law is changing so fast, as is the technology, that the wise move is never to assume freedom of use or that you know the best method to protect your intellectual capital. Always get professional advice! Top LES April Meeting in London EVOLUTION OF IP REGIME AT THE WORLD TRADE ORGANISATION (WTO)Mr. Adrian Otten, Director of the Intellectual Property Division, WTO with Mr. Philip Marsden, Linklaters & AllianceJanice Cullen reports, 'Adrian spoke about bananas, which proves that not all IP issues are hi-tech!' The 130 World Trade Organisation (WTO) members and 30 aspirant countries buy into a package deal, which embraces a wide range of measures. The TRIPS Agreement (on Trade-Related Aspects of intellectual Property Rights) states that industrialised member countries must, by 31 December 1996, have had in place at least minimum legislation for major trade areas and effective procedures for enforcement, and had to assent to the WTO Disputes Resolution Process. The deadline for developing countries was 1 January 2000. A number of those countries have not yet fully complied. However, so that progress may continue, other member countries are showing restraint from pressing individual claims. It is planned for the least developed member countries to be in compliance with TRIPS measures by 2006. Compliance can have a subjective element and some industrialised and developing countries considered themselves to have fulfilled the requirements, only to discover gaps and differing interpretations when they completed the WTO review questionnaire! Adrian Otten gave a clear resume of the evolution of the IP regime at the WTO, setting it in the wider context of other WTO agreements. That's where the bananas came in! As long as the EC continues to prefer to source bananas from former colonies, Ecuador's banana trade is suffering. Ecuador went through the Dispute Resolution procedure and received agreement that it could take measures to protect its market. Sanctions could be escalated from seeking compliance - to receiving compensation - to taking cross-retaliatory action in other fields covered by WTO membership. Initial sanctions available within the banana market itself were limited if they were not to adversely affect Ecuador itself. They could then apply sanctions to consumer goods and services. If that still did not yield the $200m estimated as their market loss, Ecuador could extend sanctions to IP relating to performance materials and compact disks. This measure could affect Licensing Executives in Europe! In fact, rather than let full cross-retaliation occur, the parties are likely to try to agree a settlement. And on to the future: Philip Marsden joined with Adrian Otten in proffering examples of recent complaints and dispute settlement decisions. There are ongoing disputes such as US v the EC and Greece (separately) regarding film copyright, and EC vs the US on the playing of IP protected music in commercial venues such as restaurants. Disputes are state to state but the process is business driven. Practitioners are concerned about the long time it can take to achieve compliance through the WTO route. The EC may provide some relief in that as they need to respond within six months to a complaint, it provides a quick trigger for a solution, and is seen as a signal of intent to proceed to the WTO. Non-violation measures can also adversely affect trade or IP protection. The 5-year moratorium on such cases expired at the end of 1999 so more examples may arise. There was no overall agreement at the Seattle WTO summit and there may be a relaunch of a full round of trade negotiations. There are supporters and opponents of globalisation, a variety of pressure groups, some countries want to link Agriculture more closely to Service and there are issues of harmonisation of Agreements. In the meantime, the IP division has to go ahead with the 5-year review of the TRIPS Agreement and assess the supporting implementation documents from over 60 countries. Adrian and his team have a meaty and we hope fruitful time ahead. Janice Cullen started a new job in May as a Business Development Manager at Kings College London, Enterprises Ltd. At the time of the April meeting she was working at Bristol University as an EC expert. Top LAST NIGHT OF THE PROMSIt has been said before that organisations such as the British Broadcasting Corporation would much rather report the news than make it, but the Corporation recently found itself in the latter position over its failure to prevent the European Group using the term CATHCART SPRING PROMS for a concert at the Royal Albert Hall. The basis of the BBC's case appears to have been that confusion would result not least because the concert was to be held at the same venue as the BBC Proms season. However, a glance at the U.K. Trade Marks Register shows that the BBC has no monopoly in the U.K. on trademarks including the word PROMS. The County Council of the City and County of Cardiff has a U.K. registration No. 2,032,824 of THE WELSH PROMS in respect of concert services, and Music For Youth has a U.K. registration No. 2,007,136 of SCHOOLS PROMS for the organisation and presentation of music concerts and related services. This latter registration was itself obtained on the basis of use and trade evidence and honest concurrent use with now lapsed registrations of THE TIMES SCHOOLS PROM dating from 1975 in the name of Time Newspapers Ltd. Both the BBC's own U.K. applications to register THE PROMS and LAST NIGHT OF THE PROMS filed in July 1997 and Mr. Palmer-Jeffery's (the Chairman of the European Group) U.K. application to register CATHCART PROMS filed in October 1996 are still pending. Distinctiveness through use is being claimed in respect of both the LAST NIGHT OF THE PROMS and CATHCART PROMS. Given the existence of the above mentioned registrations and the descriptive nature of the word PROMS itself it is difficult to see how the Trade Mark Registry decision could have been otherwise, although one can well understand the BBC's concern that their reputation in THE PROMS could be diluted as a result. Whether the matter will be taken further remains to be seen. Top NHS RebrandingReport by Bill DowneyWilson Gunn M'CawThe National Health Service is often in the news. However, trademarks are rarely mentioned. But this does not mean the NHS is not alive to their importance. Apparently in a 'major rebranding exercise', a multiplicity of the old logos are to be sacrificed in favour of a single 'new' logo - you've guessed it, the new logo is the NHS! This change has presumably been some time in the planning because a U.K. registration of the new logo under No. 2,139,445 has already been obtained by the Department of Health on an application filed on 17th July, 1997. The registration has an interesting specification of goods and services spread over classes 16, 36, 41 and 42. Printed matter and stationery in class 16 and education, entertainment and cultural activities in class 41 all relating to health promotion, prevention of illness and the treatment of sickness and injury are included, but strangely enough not the promotion of health, prevention of illness and the treatment of sickness and injury itself. Perhaps we can look forward to an updated 'carry on doctor'! It is not altogether clear that this attempt to create a brand and its associated commercial developments has the whole-hearted support of the medical profession. Still, it will, we are told, save money, although saving money in the NHS has a very special meaning! Top Preparing for OppositionAn introduction to Opposition and Appeal proceedings at the European Patent Office (EPO).Opposition and Appeal proceedings at the European Patent Office facilitate central attack of a competitor or competitors' Patent. They are increasingly a central part of many organisations' Intellectual Property (IP) protection and enforcement strategy and therefore an area of some interest for licensing and other IP practitioners. An important consideration is that once an opposition is underway any related Patent action in a national court will generally be stayed, that is, postponed pending the outcome of the Opposition. The grant of a European Patent by the European Patent Office is a major step in the protection of an invention. But it is not the final step. A European Patent may be opposed and Opposition and Appeal proceedings can be launched by one or more third parties. Opposition proceedings, a highly structured process full of regulations and deadlines, can last for two years or more, followed by an Appeal procedure for another two years or more. As will be described below, Opposition and Appeal Proceedings at the European Patent Office not only allow you to oppose or defend a Patent, but they also offer an opportunity to resolve validity conflicts, establish the strength of a Partner, or challenge and limit another party's rights. A Notice of Opposition must be filed within nine months from the date of the grant at the EPO. The European Patent Convention formulates the following grounds for Opposition: the invention is not new, not inventive or not capable of industrial application; the invention is not sufficiently described in the Patent to enable a skilled person to implement the invention; or the subject matter of the Patent extends beyond the content of the application as filed. The Notice must include the appropriate grounds and cite all necessary evidence, but the submission should be concise and relevant - it is inappropriate to 'pad out' material. On the other hand, it is difficult to introduce further grounds and evidence later in the proceedings. The use of visual aids can improve communication and helps to put a case across In general, a highly structured approach is advisable, addressing the Patent on a claim by claim basis. The use of visual aids can improve communication and the submission of diagrams with colour coded layouts, virtual prototypes and 3-D models would certainly help to put a case across. Opposition proceedings are conducted in writing, but any party has the right to request oral proceedings. Oral proceedings can be useful as a 'backstop', to argue the case more cogently, to present witnesses and discuss evidence. A decision may be issued in writing or during a hearing at the EPO. Within two months of this decision any party adversely affected by the decision can file a Notice of Appeal, to be followed by a Statement of Grounds and Evidence within four months of the decision. Appeal proceedings are also conducted in writing. A hearing at the end of the proceedings can be requested. As noted above, introducing new grounds and evidence once the proceedings have started can be awkward. Ongoing monitoring pays dividends in ensuring timely intervention and more effective Opposition. Just as important is the ongoing monitoring of the activities of competitors at the European Patent Office. This is a cost-effective way to enable you to review the prosecution of their Patent. Moreover, Opposition proceedings at the EPO can represent very good value. This is particularly the case if the alternative is Europe-wide validity proceedings with the associated expenses and time-consuming actions in a number of individual states. Publication
Representation
This briefing document has been produced by the Murgitroyd & Company E-Team, European Opposition and Appeal Team and has been reproduced from the publication, 'Preparing for Opposition' ©Murgitroyd & Company 2000 Top The Race for DNAThe race to complete the decoding of the entire sequence of human DNA has now entered its final stages. Genetic research scientists working as part of the Human Genome Project (HGP) - the publicly funded international partnership set up to map the entire sequence of human genes - announced this month that they had compiled a 'working draft' copy of the DNA blueprint for human life that was about 85% complete. Much of the genetic code still needs to be proof-read to produce the 'finished' version. Nevertheless, this figure, which corresponds to overlapping sequences of data amounting to 3.2 billion individual DNA code letters, provides an indication of the huge progress made by the international research team. Five human chromosomes have now been fully and accurately sequenced, and the project appears to be on course to achieve its goal of decoding all 23 chromosomes considerably earlier than originally expected. However, the HGP is not the only organisation attempting to unravel the human genome. It is widely believed that Celera, a private US biotechnology company headed by high-profile scientist Craig Venter, is also very close to obtaining a complete version of the human DNA sequence. Moreover, whereas the genetic data generated by the HGP have been released into the public domain each day via the Internet, Celera has not made public its discoveries and intends to seek patent protection for novel gene sequences. Thus, as the race to be first to complete a full human genetic map approaches the home straight, we can undoubtedly expect widespread coverage in the media, which is becoming increasingly intolerant of any commercial exploitation of biotechnology. Will the virtuous HGP scientists prevail, or will the oppressive biotech corporation and its monopoly-seeking leader - already dubbed 'Darth Venter' by his critics - be first past the winning post? Watch this space. Dr. Michael Douglas
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