IMPACT®

ICO'S NEW INSPECTION POWERS

Following a recent Data Sharing Review the Ministry of Justice has launched a consultation on proposed new inspection powers and funding arrangements for the Information Commissioner. The review concluded that the Information Commissioner's office requires stronger powers and sanctions to carry out its duties. Now there's a surprise!

Spore Copyright Saga

Earlier this month, the video game maker Electronic Arts ("EA") released the much anticipated "Spore" video game in the UK, but was promptly attacked by thousands of Spore fans on Amazon.com who found that their private use of the game was substantially curtailed by EA's copyright restrictions in the game software.

"Spore" is a creation of Mr Will Wright, the designer of the successful "The Sims" video games.  Spore's unique selling point is that it allows players to use tools to help the evolution of their creations from mere microscopic organisms to intelligent and social life forms which can then master their surroundings and travel through space, constantly evolving at every venture.

However, for many Spore enthusiasts, the nurture of that evolution was squashed by the Digital Rights Management system employed by EA which restricted the number of times the game could be installed on personal computers.  An EA spokesman commented earlier this month that its system "works just like online music services that limit the number of machines on which you can play a song" and that system "is an effort to control piracy".

The current position in the saga is that EA has relaxed the copyright protection for Spore and the user restriction has been raised from three to five computers which EA believes ought to account for all legitimate uses. See the online BBC report earlier this week:  EA also plans to allow five screen (or user) names per copy of the game in the future.  These moves ought to now appease the avid Spore game player.

The Spore saga has certainly demonstrated the market considerations that a games manufacturer needs to take into account when balancing the need to combat piracy and protect copyright with the reasonable consumer's realistic expectations about the product.

The balance will no doubt be dictated by how far a games manufacturer can commercially exploit its product through copyright protection without drawing in complaints that would ultimately serve to damage the repute of the product.

No residual goodwill in MINIMAX trade mark

Under a recent ruling in Minimax GmbH & Co KG v Chubb Fire Limited (Chubb), the High court has allowed an appeal from a hearing officer’s decision made in January 2008,  and has rejected Chubb Fire Limited’s opposition to the registration of the word MINIMAX as a trade mark by Minimax GmbH & Co KG (Minimax).

Origins of the appeal:

In August 2003, Minimax applied to register the trade mark MINIMAX in class 1 for fire extinguishing agents and compositions, and class 9, for fire extinguishing and fire protection appliances. In January 2006, Chubb opposed this application under s.5(4)(a) of the TMA, which provides that ‘a trade mark shall not be registered if, or to the extent that its use in the

United Kingdom

is liable to be prevented – (a) by virtue of any rule of law (in particular the law of passing off). In January 2006 the hearing officer held that at the relevant date Chubb did have a good will and reputation in the word MINIMAX for fire extinguishers and their servicing and refurbishment, as well as for the servicing and refurbishment of hose reels.

Minimax appealed this decision, claiming that the hearing officer had applied incorrect principles in reaching the decision and had failed to take into consideration the decision made by a hearing officer in earlier proceedings. (These earlier proceedings relate to MINIMAX’s successful application in 2005 to revoke two trade marks for the words MINIMAX owned by Chubb on the basis of non-user under s.46(1)(b) of the TMA).

Ruling:

Judge Floyd J ruled in favour of Minimax’s appeal and rejected Chubb's opposition under s.5(4)(a). The following reasoning was applied:

• When hearing an appeal for Trade Marks Registry, the court was conducting a review and not a re-hearing (REEF TM [2003] RPC 101)

• It is possible for a party to have made no real use of a mark for a period of 5 years, but to have retained goodwill in the name sufficient to support a passing off action (Ad-Lib Club v Granville [1972] PRC 673 and Sutherland v V2 Music Limited [2002] EMLR 2)

• In January 2006 the hearing officer was deemed incorrect to have treated Chubb’s evidence as demonstrating continued use of the MINIMAX trade mark, when all it had been doing was servicing and refilling existing MINIMAX extinguishers which had been returned to it. There was no supply to the public of any product marked MINIMAX.

• Although there was some use up to 1999, from then until this application there was no evidence of use. Chubb’s argument that this case should be contrasted with cases such as Ad-lib as the business in MINIMAX fire extinguishers had taken place over many decades, was rejected.

The case demonstrates that there is nothing in principle to prevent a person bringing an opposition based on passing off under s.5 (4)(a) of the TMA, even though it has a ruling against it that it had not made genuine use of the trade mark under s.46(1)(b) of the TMA. The problem for Chubb was that they could not demonstrate any residual goodwill in the MINIMAX mark. It had simply been servicing and refilling MINIMAX extinguishers returned to it. 

NODUS

There was a fantastic turnout for the NODUS Event last night. Colin Bliss QC introduced the speakers for the evening who were Denise McFarlane, Douglas Campbell and Tom Hinchliffe, all of 3 New Square.

Denise McFarlane started off with an instructive presentation on the do's and don'ts of instructing Counsel. In essence the message was not to worry too much about doing things the 'wrong' way or the 'right' way but instead to keep it simple, organised, to ensure good lines of communication with Counsel and to always keep any marked copies that are returned to you by Counsel! Douglas Campbell was second on the podium and spoke on the 'Bolar' exemptions relating to the experimental use of patented products. Douglas surmised that you should obtain the advice of Counsel if you are seeking to rely on the exemption.

Tom Hinchliffe was next to speak and did so on the recent case of Actavis v Merck which dealt with the question of whether the Court of Appeal could decide against its previous judgement in BMS v Baker Norton by which it should be bound. The CA decided that it could and this was partly because the UK case law was in direct opposition to the EPO settled case law in this area. However,  last minute referral to the EPO Enlarged Board was made which cast doubt over the EPO settled issues and as a result, the time for leave of appeal to the House of Lords was extended until after the Enlarged Board has delivered its decision.

The next event will be in December 08. More details will be posted nearer the time.

New IP guides for businesses trading abroad

The UK Trade & Investment and the UK Intellectual Property Office are publishing a series of five guides aimed at British companies who are trading in major markets around the world. These guides are intended to explain where businesses are likely to face problems in obtaining, protecting and enforcing their intellectual property rights. We haven't been able to find a copy of the new guides on the UKIPO website but it may be worth giving them a call if you are intending to trade in Brazil, China, India, Korea or Vietnam.