More Fizz than Bucks: when being Original doesn't help

Bucks Fizz, c.2011.  The original group was never found ...

Modestly calling himself an "amateur copyright junkie", the IPKat's friend and occasional correspondent Andy Johnstone has turned his hand to a spot of trade mark law, furnishing us with a note on a case with a name so long and clumsy that we Kats can but praise the economy and elegance of continental and institutional practice of giving cases numbers, not names. A convenient and shortened version of the name of this case is Application by the Original Bucks Fizz to Register the Trade Mark ‘The Original Bucks Fizz’ and Opposition by Heidi Manton; Application by the Original Bucks Fizz to Revoke the Trade Mark ‘Bucks Fizz’. There are an awful lots of bucks and fizzes in this report (170 of the former, 175 of the latter, but that's another matter.

Anyway, getting back to Andy's note:

"Such was the excitement generated by Louboutin v YSL in America (noted by the AmeriKat here) that Eurovision Song Contest aficiandos and other followers of stylish matters may well have missed a decision by the UK's Intellectual Property Office in a trade mark dispute which has been rumbling on for over a decade between the former members of the Eurovision-winning group (1981, since you ask) Bucks Fizz. For a group that's had more line-up changes than an X Factor judging panel, a little history may be required. 

Mike Nolan, Jay Aston, Cheryl Baker and Bobby Gee were brought together to form the group specifically to represent Great Britain in the Eurovision Song Contest in 1981. The name Bucks Fizz was registered as a trade mark by their then management and creators Big Note Music Ltd in classes 9 (sound recordings etc) and class 41 (live entertainment etc). Over the next few years the group had several chart hits but, as happens with such groups, in 1985 Jay Aston left and was replaced by Shelley Preston. After Shelley left in 1989 the band continued to perform as a trio until 1993, when Cheryl Baker left to pursue a solo career and two new female members -- Heidi Manton and Amanda Swarcz -- joined the line-up. Three years later Mike Nolan and Amanda Swarcz left, while David Van Day joined. So at this stage Bobby Gee was the only original member left. Shortly thereafter, David Van day left and, together with Mike Nolan, began performing as 'Bucks Fizz starring Mike Nolan and co-starring David Van Day'. 

Meanwhile the trade mark registration (only valid for 7 years in those days) had lapsed. Heidi Manton came to an agreement with Big Note Music that she could take on the name and, in 1997, she applied to register the name as a trade mark. This registration was opposed by Mike Nolan and Cheryl Baker, while at the same time Nolan and David Van Day had fallen out and their business relationship was ending acrimoniously. Nolan, under some stress, agreed to withdraw his opposition -- largely, it seems, in order to prevent David Van Day getting his hands on the trade mark. From 2001 the name Bucks Fizz was being used by the group consisting of Bobby Gee, Heidi Manton and several other people who came and went. Around 2004 a revival of interest in music from the 1980s prompted Mike Nolan, Cheryl Baker and Shelley Preston to get together to form The Original Bucks Fizz (OBF). Bobby Gee even performed with them on a number of occasions. Then, in 2009, Jay Aston also joined OBF. 

Sadly, all was not well backstage. In January 2010 OBF applied to register the words The Original Bucks Fizz as a trade mark in the same classes (9 and 41) as the existing mark Bucks Fizz. Heidi Manton (who was by now Bobby Gee's third wife) opposed the registration on the grounds of both the likelihood of confusion and bad faith. The members of OBF then sought a revocation of the Bucks Fizz mark under the Trade Marks Act section 46(1), on the ground that use of the mark in relation to the band (containing only one original member of the Eurovision-winning line-up) would mislead the public as to the quality of the service being offered. 

The Hearing Officer, Allan James, cut through the various changes in personnel (15 individuals in all) by referring to Laddie J's analysis in Byford v Oliver [2003] EWHC 295 (Ch) over claims to the band name 'Saxon'. Simply put, each individual line-up constituted of a partnership at will, and any goodwill, IP and other intangible assets of the partnership which could not be monetised at the time of the breakup of each partnership could not be considered the property of any one person or faction of the former partnership. Mr James then considered the implications of the ECJ judgment in Case C-259/04 Elizabeth Emanuel v Continental Shelf 128 Ltd, which held that there was no deception of the public in using a legally assigned mark consisting of the name of a famous designer, even though that designer no longer had any connection with the business. The hearing officer applied this decision to the grounds for revocation pleaded by OBF and rejected their claim. Having found that there was no likelihood of misleading the public as to the quality of performances by the present day Bucks Fizz, conversely Mr James had little doubt that the mark The Original Bucks Fizz would cause confusion among fans and so upheld the opposition without needing to consider the bad faith aspect".

Says the IPKat, while the words "partnership at will" won't be found in UK or European Union trade mark legislation, the concept works well with loose groups with ever-changing line-ups such as pop groups [and blogging teams, Merpel notes tartly].

Bucks Fizz without the apostrophe here
Buck's Fizz with the apostrophe here
The English apostrophe: a user's guide here
The Scottish apostrophe: a non-user's guide here
The greengrocer's apostrophe: an over-user's guide here

Patent revocations in Germany

The IPKat has received a notice from his friends at the 24IP Law Group concerning an interesting legislative proposal. According to 24IP:

"The German Government has placed before the Bundestag (Parliament) a draft bill which will bring major changes to simplify and modernize patent revocation proceedings.

It is a basic principle of German law that the patent infringement courts may not decide the validity ... of a patent. Separate revocation proceedings must be filed in the German Federal Patent Court in Munich. The infringement courts may only suspend infringement proceedings if the request for revocation ... is considered to have an overwhelming chance of success. An application for revocation ... can be made at any time, even if the three month deadline for filing an Opposition to the grant of the patent has expired.

The bill provides that the current revocation proceedings should become better structured and more transparent to users. The general principles of German Civil Court Procedure will be followed more strictly. The Court will be obliged to indicate to the parties their preliminary views on the merits of the case at an early stage and will subsequently allow the parties to file additional submissions. Further arguments will not be considered once the parties have filed these submissions.

The amendments should also speed up the appeal proceedings which are held in front of the German Federal Court of Justice in Karlsruhe. The Appeal Court will only decide on points of law in the future. It cannot engage in further fact finding, except when this is deemed “to be indispensable for ensuring that the lower court has found the true facts of the case”.

The legal provisions on the appeal proceedings will continue to be found in the German Patent Act, rather than in the German Code of Civil Procedure. Appeals will still be available as a matter of right –- there will be no need to file for leave to appeal. However, the general codes of practice of the German civil courts will become important .... The arguments presented in the initial filing of the claim will become more important and the proceedings will be more compact. This is an excellent development, since infringement courts currently often suspend infringement proceedings for several years pending a decision on the validity of the
patent [says the IPKat: the Germans aren't the only nation to suffer this inconvenience. Look at the horrible case law on stays of UK actions pending EPO revocation proceedings].

Unfortunately the draft bill does not contain a proposed timetable for revocation proceedings. The bill will also not change the current situation in which decisions made during revocation proceedings will not bind the infringement courts and vice versa [Why not? Is it because it isn't as big a problem in practice as it is in theory? Can any German reader explain?]. However, we can expect a reduction of the duration of revocation proceedings because patent infringers will not be able to substantially delay decisions in the future by stretching out revocation cases. This should make it harder for an infringer to continue infringing without impunity for long periods of time".

Superfamily, shame about the Neutrokine

Yesterday Mr Justice Kitchin delivered a mega-judgment in Eli Lilly & Co v Human Genome Sciences Inc, [2008] EWHC 1903 (Pat), yet another significant Patents Court for England and Wales decision on patent validity.

In short, HGS owned a patent that disclosed the nucleotide and amino acid sequence of a novel member of the TNF ligand superfamily, the polypeptide Neutrokine-α: this was a cytokine (a protein which acted as an inter-cellular mediator in inflammation and cellular responses). The history of the patent was as follows: a European application was filed on in October 1996 and it was granted nearly nine years later, in August 2005. The patent correctly identified the polypeptide as a member of the TNF ligand superfamily, listing a long description of its activities and uses. There was however no scientific data to support that description, which was really a prediction based on knowledge of other members of the TNF superfamily.

In these proceedings Eli Lilly sought to revoke HGS's patent on several grounds, including an allegation that there was no disclosure of an invention susceptible to industrial application in that HGS had filed its application without knowing the biological activity or function of Neutrokine, the identity of any receptor, the conditions which it caused or the diseases which it might be used to treat.

Kitchin J revoked the patent for lack of industrial application, insufficiency and obviousness. In his view

* the court to construe the "indutrial applicability" provision of the Patents Act 1977 so that, so far as possible, it had the same effect as Article 52 of the European Patent Convention (EPC).

* in the context of indutrial applicability, "industry" to be construed broadly. It included all manufacturing, extracting and processing activities of enterprises that were carried out continuously, independently and for commercial gain. "Industry" need not however have been conducted for profit -- and a product which was shown to be useful to cure a rare disease could be considered capable of industrial application even if it had never been intended for use in trade at all.

* the skilled person had to be able to derive an invention's industrial application from its description in the patent, read with the benefit of common general knowledge. Accordingly that description had to disclose a practical way of exploiting the invention in at least one field of industrial activity. This requirement had recently been re-formulated as an enquiry as to whether there was a sound and concrete basis for recognising that the contribution was (or was not) capable of leading to practical application in industry. Even so, it was still necessary to disclose, in definite technical terms, the purpose of the invention and the manner in which it was to be used to solve the given technical problem.

* there also had to be a real prospect of exploitation of the invention that could be derived directly from the specification, if it was not already obvious from the nature of the invention or the background art. This requirement could not be satisfied it what was described was merely an interesting research result that could yield an as-yet unidentified industrial application.

* the purpose of granting a patent was not to reserve an unexplored field of research for the applicant -- nor was it to give the patentee unjustified control over others who were actively investigating in that area and who might eventually have found ways actually to exploit it.

* if a substance was disclosed and its function was essential for human health, its identification as having that function immediately suggested a practical application -- but if its function was not known, or was incompletely understood, and no disease had been identified that was attributable to an excess or deficiency of it, and no other practical use was suggested for it, the requirement of industrial applicability was not satisfied.

* the use of a claimed invention in order to discover more about its own properties was not of itself an industrial application for the purposes of patentabiity.

* appliying all of these principles, HGS's patent -- however meritorious its discovery might have been -- was invalid for lack of industrial applicability.

The IPKat is impressed with the judge's masterful summary of the deeper meaning of "industrial applicability"; a patent has to contain a teaching -- the skilled addressee should not be faced with a do-it-yourself kit for working out where the invention lies. He believes that this is the first case in which any British court has had to consider the circumstances in which a patent relating to a gene sequence can validly be granted on the basis of it being capable of industrial application. Merpel says, this case carries another important message: the state of the art when the patent's validity comes under scrutiny cannot be used retrospectively in order to correct deficiencies in the patent at the time when it was filed.

So you CAN cancel a mark that's been revoked

The decision of Appointed Person Amanda Michaels back in December 2007 in T-Mobile (UK) Ltd v O2 Holdings Ltd is now available online from the UKIPO website. This is one of those technical decisions that excite lawyers - and academics - more than consumers, but here goes anyway ...

This was the hearing of an appeal by O2 against a decision of the UK Trade Mark Registry that O2 could not pursue its invalidation actions against the BUSINESSZONE PLUS and BUSINESSZONE trade marks, which were registered by T-Mobile in May 1996 for goods in Class 9 and services in Class 38. Why did O2 want these marks out of the way? This was because, in February 2004, O2 applied to register its own marks BUSINESS ZONES and BUSINESS ZONES FROM O2, by sheer coincidence also for goods and services in the same classes. For good measure, O2 applied at the same time for revocation of the T-Mobile marks for non-use under the Trade Marks Act 1994 s.46.

The registrar revoked both T-Mobile registrations with effect from March 2004. Despite the slight overlap of dates between the revoked marks and O2's applied-for marks, the latter were accepted by the registry. T-Mobile then filed oppositions based on its marks which, while now revoked, were still registered at the time of 02's filing date. In response, O2 filed requests for the invalidation of the T-Mobile marks on the basis that the revocation of T-Mobile's marks only with effect from March 2004 had left O2's marks vulnerable to opposition. The registry took the view that it was not possible to pursue the invalidity action because the revocation of T-Mobile's marks meant that they no longer existed on the register. The registry was also concerned that an application for invalidation might also be an abuse of process. The hearing officer upheld that view. T-Mobile subsequently withdrew its opposition to O2's trade mark applications.

In this hearing the Appointed Person was required to determin whether (i) given the withdrawal by T-Mobile of it opposition, was the appeal a purely theoretical one which was of solely academic interest and thus ought not to be heard? (ii) could a revoked mark be invalidated and did the phrase "the registration of a trade mark may be declared invalid" at the beginning of s.47 of the Trade Marks Act 1994 refer only to a registration that remained extant, active or live at the date of the application for invalidity? (iii) was O2's application an abuse of process?

Amanda Michaels allowed O2's appeal. In her view,

* despite the withdrawal of T-Mobile's opposition, there remained a very small risk - which could not be completely ignored - that T-Mobile would seek to rely on its marks to achieve some commercial end. This being so, the invalidity proceedings could not be stigmatised as purely academic and the substance of the appeal should thus be dealt with.

* Since section 47(1) concerned the validity of a trade mark as at its application date, the phrase "the registration of a trade mark" in that section should be construed as referring to the process of registration, or the initial registration, of the mark. It would be inappropriate to construe those words as applying only to "live" marks which had not been revoked, surrendered or abandoned by not being renewed.

* The hearing officer was wrong to have found that O2's application under s.47 of the Act was an abuse of process. The fact that a party had made an application for revocation of a trade mark on the grounds of non-use under s.46 of the Act would not as a matter of course preclude that party from subsequently applying for a declaration of invalidity of the same mark under s.47 of the Act, as making such an application was not subject to any statutory preconditions.

The IPKat really enjoyed this one but wishes he had already used these facts as the basis for an exam question. Merpel says, these marks look horribly descriptive/distinctive for lots of things in Classes 9 and 38, but there shouldn't be any problem registering them for lollypops.

T-Mobile here
T-shirts here
T-steak here

No presumption against parallel proceedings in patent revocation cases

The last day of a cold, blustery January saw the Court of Appeal for England and Wales hand down its decision in Glaxo Group Ltd v Genentech Inc and Biogen Idec Inc. [2008] EWCA Civ 23. The judgment in this case was read by Lord Justice Mummery, with whom Lords Justices Ward and Jacob concurred.

Right: a second non-medical use - can retuximab also be used as laundry balls?

This was Genentech's appeal against the refusal of Mr Justice Lewison (noted here by the IPKat) to stay revocation proceedings in respect of the United Kingdom bit of a Genentech second medical use European patent. Claim 1 of the patent was for "use of an anti-CD 20 antibody in the manufacture of a medicament for the treatment of rheumatoid arthritis in a mammal". According to Glaxo (who were developing their own product, ofatumumab, and wanted a clear ride to market with it), antibodies of the kind described in the patent such as rituximab were available and used for therapy before the patent's priority date.

Wishing to blast Genentech's patent out of its path at the earliest opportunity, Glaxo both issued opposition proceedings in the European Patent Office (EPO) and then commenced this revocation action in the Patents Court. Genentech, like any prudent patent owner, applied for a stay of the revocation proceedings, which had been set down for trial, saying that they were an abusive duplication of the proceedings Glaxo had previously instituted in the EPO. Lewison J, expressing some unhappiness about the state of the law and rather inviting guidance from the Court of Appeal (his judgment virtually had the words "appeal me" stamped on it), refused the stay and Genentech appealed. Before the Court of Appeal Glaxo maintained that Lewison J had correctly applied the legal principles and had been entitled to hold that a stay of the revocation proceedings and the extended period of uncertainty that that would entail would not be just, given Glaxo's commercial interest in an early decision on the disputed validity of the patent in view of its plans to launch its own product.

The Court of Appeal dismissed the appeal. It the court's view

* it was legitimate for a person contesting the validity of a European patent to attack it both in an action for revocation in the UK courts and by opposition proceedings in the EPO and no estoppel principle ran counter to this.

* the European Patent Convention was silent (as was the relevant national legislation) concerning the exercise of discretion to stay national patent proceedings pending EPO proceedings, whether on the ground of forum non conveniens or otherwise. But the fact that the EPC was silent didn't mean it was irrelevant: it remained a factor in the exercise of an inherent domestic law power to stay national proceedings since it supplied the context in which judicial discretion was to be exercised.

* the risk of duplication of national proceedings and EPO proceedings was inherent.

* the Patents Court should exercise its discretion to achieve the balance of justice between the parties, having regard to all the relevant circumstances of the particular case. It was the discretion of the Patents Court and not the Court of Appeal.

* if the likelihood was that proceedings in the Patents Court would be resolve the dispute significantly sooner than the proceedings in the EPO, it would normally be a proper exercise of discretion to decline to stay the Patents Court proceedings.

The IPKat deeply regrets the almost ridiculously lengthy period of time that the EPO can take to resolve revocation issues, given the relatively short maximum life-span of most patents. The fact is that the speed at which the EPO deals with oppositions -- often hindered by the parties themselves, it is conceded -- encourages parallel litigation. A better-funded, better-resourced and highly proactive EPO could, by drastically accelerating the life-span of an opposition, make the wasteful and expensive incidence of (i) parallel proceedings in national courts and (ii) litigation over whether those parallel proceedings should be stayed a thing of the past.

Slightly sheepish apology: in the earlier version of this note, I managed to write "Glaxo" every time I meant "Genentech", and vice versa. This was, at least in part, the result of my having abbreviated them both as "G" in my notes.--The IPKat.