• タイミングで
    in:  | 

    タイミングで

                            目次はこちら

    タイミングで

    –>at a(the) time when;

    $$ In order to provide the desired timing of the release of the aerosol generating agent, different encapsulation materials may be used or different encapsulation approaches. / エアロゾル発生剤を所望のタイミングで放出するために、種々のカプセル化材料を用いてもよく、また種々のカプセル化法を使用してもよい。(USP8893724): timing

    $$ Positioning the journals for the exhaust and intake pistons 180° apart would result in the both pistons reaching their maximum and minimum excursions at the same time (symmetric timing). / 180°離れた排気および吸気ピストンに関するジャーナルの位置決めは、双方のピストンが同時に(対称のタイミングで)最大および最小偏位に到達することに帰着する。(USP8499726): timing

    $$ In other embodiments it would be possible to cause the first and second transmitters to generate sonic pulses at different times. / 他の実施形態においては、第1および第2の送信器に異なるタイミングで音波パルスを発生させることが可能である。(USP8274860): time

    $$ Thus, by conjunction with rotation and position sensing and light pulsing within the optical fibres at correct timings it will be appreciated different display patterns, different colours and strobing within the fibres will be identifiable to the human eye and can be utilised in order to determine component operational state. / かくして、回転及び位置の感知及び光を光ファイバ内で正しいタイミングでパルス状にすることと関連することによって、ファイバ内の様々な表示パターン、様々な色、及びストロボを肉眼で確認でき、構成部品の作動状態を確認するためにこれを使用できるということは理解されよう。(USP8260093): timing

    $$ The shutter varies the effective area cyclically in a timed relationship to the reciprocal motion of the piston within the cylinder. / このシャッタは、シリンダ内のピストンの往復運動に連動するタイミングで周期的に有効領域を変動させる。(USP8225754): time

    $$ Where the protection signal added is more complicated, such as where pulses which vary in their timing, or a pure sine wave is added, models of the likely copy protection signal, or assumptions about parameters of the likely copy protection signal, are used to make the identification more accurate. / 付加される防止信号がさらに複雑である場合、例えば、独自のタイミングで変動するパルスや、純正弦波が付加される場合は、適当なコピー防止信号のモデル、または適当なコピー防止信号のパラメータに関する仮説を用いることによって、より正確に特定することができる。(USP8160423): timing

                            目次はこちら

  • Athena Diagnostics v. Mayo Collaborative Services: a Paradigm of Patent Eligibility Meriting En Banc Review
    in: Ariosa v. Sequenom, Athena Diagnostics v. Mayo Collaborative Services, CAFC, courts, Federal Circuit, Guest Contributor, Guest Contributors, innovation, inventor, Inventors Information, IP News, IPWatchdog Articles, Litigation, patent eligibility, patent eligible, Patent Litigation, Patently-O, patents, SCOTUS, technology, Technology & Innovation, US Supreme Court  | 

    Athena Diagnostics v. Mayo Collaborative Services: a Paradigm of Patent Eligibility Meriting En Banc Review

    In Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) the Federal Circuit belittled pioneering work at Oxford University, indisputably one of the world’s leading research institutions. In the Athena Diagnostics v. Mayo Collaborative Services decision handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the combined efforts of Oxford University and the Max-Plank Gesellschaft, two of the world’s leading research…

  • Thoughts on Judge Koh’s Findings of Fact and Conclusions of Law in FTC v. Qualcomm
    in: Antitrust, competition law, FRAND (RAND) Royalties, United States  | 

    Thoughts on Judge Koh’s Findings of Fact and Conclusions of Law in FTC v. Qualcomm

    As noted yesterday, Judge Lucy Koh has now entered her 233-page Findings of Fact and Conclusions of Law in FTC v. Qualcomm, concluding that Qualcomm violated U.S. antitrust law.  Now that I’ve had a chance to read through the Findings of Fact and Conclusions of Law, here are my thoughts.  (For conciseness, from here on I’ll call the Findings of Fact and Conclusions of Law an opinion.)
    1.  Overall, I think the opinion is quite impressive.  Judge Koh’s analysis of the evidence seems thorough, and bases her legal conclusions on that evidence.  In several portions of the opinion, she indicates how contemporaneous documents contradicted what Qualcomm witnesses said at trial (e.g., about the firm not actually threatening to cut off OEMs’ supply of chips).  I suspect that Judge Koh’s detailed factual analysis will make it very hard for Qualcomm to prevail on appeal.  (As for the appeal, I wonder if the DOJ will weigh in again at the appellate level?  Very odd to have the two federal antitrust enforcers taking different views about the role of antitrust in policing FRAND breaches, as discussed here . . . .)

    2.  Among the key factual conclusions are that Qualcomm had market power in the markets for CDMA and premium LTE modem chips; that Qualcomm imposed de facto exclusivity requirements on OEMs and on Apple (through, e.g., rebates,  threats of cutting off supply, and agreements that purchasers/licensees wouldn’t challenge Qualcomm’s patents or other licensing practices; see summary at pp. 113-14, 151); and that the royalties Qualcomm charged for its SEPs were above-FRAND (pp. 157 et seq.).  In reaching this last conclusion, Judge Koh finds, among other things, that Qualcomm earned $7.7 billion in licensing revenue in 2016, which “exceeded the combined 2016 licensing revenue of twelve other patent licensors, including Ericsson, Nokia, and Interdigital” (pp. 8-9)–even though other firms’ patents contribute more value to the standards by which end devices operate (pp. 165-66).  Judge Koh also appears to be of the view that FRAND licenses generally must be based on the smallest saleable patent practicing unit (SSPPU), in order to conform to Federal Circuit precedent (pp. 172-73).

    3.  The key legal conclusion, in my view, is that Qualcomm excluded competitors in the markets for CDMA and premium LTE chipsets by means of (1) its “no license, no chips” policy, and (2) its imposition of de facto exclusive dealing requirements on the OEMs and Apple.  In an article I published in Law360 a couple of months ago, I explained how the no license, no chips policy could lead to this result.  Since (in the short term, at least) all the OEMs care about is the “all-in” price–that is, the price Qualcomm charges for the combination of chips + license–Qualcomm can manipulate the price of the license to puts its rivals at a competitive disadvantage.  E.g., if the all-in price Qualcomm charges an OEM, taking into account discounts, rebates, etc., is $20, consisting of $10 for a license and $10 for a chip, a rival could charge the OEM no more than $10 for a chip.  (These numbers I’m using are for illustrative purposes only.)  Suppose further that a FRAND royalty would be $5 and that the marginal cost of producing a comparable chip, not including the FRAND royalty, is $12.  On these hypothetical facts, however, the OEM could not charge more than $10 for its comparable chip, and thus Qualcomm’s circumvention of its FRAND commitment is a direct cause of the rival’s inability to compete.  That would be the economic theory, at any rate, and I believe that is what Judge Koh has in mind at pages 153-54, 185 in her discussion of why the no license, no chips policy enables Qualcomm to maintain its chip monopolies.  Such a scheme might also involve rebating back some portion of the all-in price when the OEM buys chips from Qualcomm and not from a rival. 

    4.  Further, Qualcomm’s imposition of de facto exclusivity requirements on OEMs and on Apple put competitors at an obvious disadvantage, particularly given the high costs of entry into the chipset market (and thus the need for some prospect of a significant customer base to make that investment worthwhile).  Judge Koh appears to providesa substantial evidentiary basis for her conclusion that Qualcomm’s conduct contributed to the inability of Intel and other potential rivals to gain a foothold in the chipset market during the time period in question.

    Judge Koh also concludes that, in view of her summary judgment ruling from last fall, Qualcomm’s FRAND commitment required it to license its competitors, and thus amounted to an antitrust duty to deal.  Under Judge Koh’s analysis of the Aspen Skiing case, Qualcomm’s breach of this antitrust duty itself amounted to a violation of Sherman Act section 2 (see pp. 134-31).   

    5.  By these means, Judge Koh concludes, Qualcomm was able to foreclose potential rivals and maintain its monopolies in the CDMA and premium LTE modem chip markets.  This diminished competition resulted in the OEMs (and, ultimately, consumers) paying higher prices and having fewer alternatives from which to choose. 

    Some portions of the opinion, in isolation, might be read as resting on the premise that Qualcomm’s breaches of its FRAND commitments (e.g., charging above-FRAND royalties), standing alone, cause competitive harm and thus violate the antitrust laws (see, e.g., p.183).  In my view, this would be a more tenuous claim under U.S. antitrust law, which generally doesn’t make it illegal for a monopolist merely to charge a monopoly price.  Nevertheless, I think there is enough in the opinion to support the conclusion that Qualcomm’s circumvention of its FRAND commitments enabled it to distort competition in the chip markets and thus to maintain its monopoly power (which is a standard sort of antitrust offense under U.S. law).  The harm is then measured by the higher prices consumers pay and, possibly, by the loss of whatever the foreclosed rivals would have contributed to longer-term innovation in the chip markets.  On the latter harm, see, e.g., pp. 124, 196-98; Judge Koh would appear implicitly to reject arguments that penalizing Qualcomm will have a negative impact on innovation.

    6.  As for remedy, Judge Koh asserts that “Qualcomm’s anticompetitive conduct is ongoing,” in that it “continues to refuse to provide patent exhaustion, refuse to sell modem chips to an OEM until the OEM signs a license, and engage in chip supply threats and cutoffs” (p.218).  The resulting injunction has five provisions (pp. 227-33):

     (1) Qualcomm must not condition the supply of modem chips on a customer’s patent license status and Qualcomm must negotiate or renegotiate license terms with customers in good faith under conditions free from the threat of lack of access to or discriminatory provision of modem chip supply or associated technical support or access to software.
    (2) Qualcomm must make exhaustive SEP licenses available to modem-chip suppliers on fair, reasonable, and non-discriminatory (“FRAND”) terms and to submit, as necessary, to arbitral or judicial dispute resolution to determine such terms.
    (3) Qualcomm may not enter express or de facto exclusive dealing agreements for the supply of modem chips.
    (4) Qualcomm may not interfere with the ability of any customer to communicate with a government agency about a potential law enforcement or regulatory matter.
    (5) In order to ensure Qualcomm’s compliance with the above remedies, the Court orders Qualcomm to submit to compliance and monitoring procedures for a period of seven  (7) years. Specifically, Qualcomm shall report to the FTC on an annual basis Qualcomm’s compliance with the above remedies ordered by the Court.

    Judge Koh thus rejects the DOJ’s suggestion from a few weeks back that there should be some further briefing or hearing on remedies (pp. 226-27).  

Awarding attorney’s fees and 35 U.S.C. § 285

Awards for attorney’s fees, and contract law generally, are topics in the case Buckhorn v. Orbis .

Of relevance to “loser pays” in the Goodlatte Innovation Act, note the text:


r,
“the narrow exceptions to the American Rule effectively
limit a court’s inherent power to impose attorney’s fees as
a sanction to cases in which a litigant has engaged in bad-faith
conduct or willful disobedience of a court’s orders.”
Chambers, 501 U.S. at 47. This situation does not exist
here, nor does Orbis argue that it does.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1711.Opinion.6-30-2015.1.PDF

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  • More on the Jawbone trade secret matter

    A post at lexology goes into the Jawbone “trade secret” matter:

    http://www.lexology.com/library/detail.aspx?g=1d76587e-26e1-41c5-a2e0-bac27ff6e2d9

    A problematic issue is the failure to explicitly identify “trade secrets” apart from the more general category of
    “confidential information.”

    See previous IPBiz posts, including

    Top Agent v. Zillow: need to plead trade secrets with specificity

    Convolve/MIT lose on trade secret issue at CAFC


    Protecting trade secrets
    :


    A would-be plaintiff in a trade secrets dispute must recognize that one of the first questions that both the court and the defending party will demand to have answered is ““what is the trade secret?”
    This is explicit in California which requires the party claiming trade secret misappropriation to identify the trade secret with specificity before conducting discovery relating to the trade secret claim. Cal. Civ. Proc. Code §2019.210.

    The lexology post also notes:


    Exit Interviews with Teeth: The complaint reveals that at least one employee was pressed during an exit interview about retaining company materials and finally admitted to retaining a “Market Trends & Opportunities” presentation. Far too many exit interviews are perfunctory “So where are you going? Please sign this” time-wastes representing a blown opportunity to discern what documents might possibly be retained at home or on thumb-drives, what unusual downloading activities may have occurred in one’s final months, will you be performing substantially similar job duties for a competitor, etc. Jawbone seems to have opted for vigorous discussion with some of the flight to Fitbit employees.

    Sound and Immediate Forensic Analyses: The complaint discloses findings of apparently immediately-performed forensic analyses on the departing employees work computers including detection of both software designed to wipe downloading activities as well as more ham-fisted manual wiping of system logs. Best practices dictate that such forensic investigation be performed by an independent vendor, not in-house IT. Because time is of the essence, an established protocol for such imaging should be at the ready and the vendor pre-selected.

    The Lexology post is from the law firm: Carroll, Burdick & McDonough LLP

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  • 【同人誌、ボカロにも影響?】妥結直前のTPP知財条項について徹底解説(全文文字起こし前編) – BLOGOS

    【同人誌、ボカロにも影響?】妥結直前のTPP知財条項について徹底解説(全文文字起こし前編)
    BLOGOS
    TPP知財条項について徹底解説」と題しまして、TPPの中の知的財産条項に関する緊急生放送をお送りします。なぜこのタイミングで、緊急生放送をやるのかというと、先日、TPP交渉の大きなカギを握るアメリカのTPA法案が出たんですね。これは、大統領貿易促進権限、通称 …

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  • SIGNIFICANT

                            目次はこちら

    SIGNIFICANT

    $$ For example the secure module may use 128-bit numbers internally and then only return to the client the most significant 32 bits. / 例えば安全保護モジュールは、内部で128ビットの数を使用し、次にクライアントの最上位の32ビットのみを戻す。(USP6996722)

    $$ Indeed, there may be two significant "blips" in the gain and offset profiles with angle around the scan (θ), about 180° apart. / 実際のところ、走査周囲の角度(θ)、約180°隔たった角度で利得およびオフセットのプロファイルに2つの有意な「中断部」の存在する可能性がある。(USP6900756)

    $$ X-ray analysis of this catalyst showed a single cubic phase with a lattice parameter of 3.90.times., indicating significant alloying of the Ru with the Pt. / この触媒のX線回折分析は、3.90Xの格子パラメーターを伴う単一立方相を示し、これはRuとPtの有意合金を意味している。(USP6855452)

    $$ In the drawings FIGS. 1 to 4 show the more significant aspects of the network implementation. / 図面の図1から図4には、ネットワーク実施のさらに重要な要点が示されている。(USP5533005)

    $$ If the duration of activation of a given key is not significant for its execution by the second apparatus, the relevant release message will simply be ignored. / もし所与のキーの作動の期間が第2装置によるその実行に十分でないなら、関連する解放メッセージは単に無視されよう。(USP5479385)

    $$ This is implemented by acquiring a scattering pattern over a period during which the object moves a significant distance on the conveyor through the fan beam. / これは、物体が扇状ビームを通してコンベア上で相当の距離移動する時間中に散乱パターンを収集することにより実施される。(USP6122344)

                            目次はこちら

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  • What happens to the UPC if the UK leaves the EU?

    From the most recent Rouse newsletter comes some highly pertinent information and some thoughtful comment on a question that this blogger is frequently asked:

    What will happen to the UPC [that’s the Unified Patent Court] if the UK leaves the EU?

    Will the planned referendum on the UK’s continued membership of the EU delay the opening of the UPC? It appears the UK Intellectual Property Office has had this question in mind, since after months of speculation, it released the following statement to the IPKat blog, last week:

    “The Government is committed to this project and wants the UK to be part of a European patent system that supports growth and fosters innovation. The Prime Minister was personally involved in the negotiations on the Unitary Patent regulations [so you know who to blame or bless, depending on your point of view] and the UPC Agreement and the UK is taking an active role in the current work to implement the new system.

    There is still work to be done before the UK can ratify the Agreement, and I am committed to pressing ahead with this. It is the Government’s intention for our domestic preparations to be completed by Spring 2016“.

    Questions remain as to how much money the UK government will be prepared to invest in setting up the UK Divisions of the UPC before the planned referendum. The statement is notably silent on when the Government intends to ratify the UPC Agreement. Even if it is proposing to ratify in 2016, will it want to secure a venue, administrative staff and IT system for the UK Divisions of the Court before this date, or is it likely to defer this investment? Indeed, might it delay ratification itself until after the 2017 referendum leading to inevitable delay to the UPC? [this blogger assumes that a delay until after the referendum is the course of action that is both easiest to implement and simplest to justify, given the uncertainties and the need to avoid incurring wasted expense]

    If the UK votes to leave the EU, it must also leave the UPC and UP although there is nothing to stop the new system continuing without the UK. However, it may well be less attractive to patentees and litigants if the UK is excluded. We would also expect the London branch of the Central Division to be moved elsewhere — possibly to the Netherlands which is the fourth biggest patent filing country in the EU. However, regardless of the UK’s participation, the new system will still offer costs savings for patent protection and litigation covering a territory that is home to hundreds of millions of consumers.

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  • Sofa, so good? How to lose both your two trade marks and still come out on top …

    Sitting comfortably?  The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), a 29 June decision of Judge Richard Hacon in the increasingly impressive and cost-effective Intellectual Property Enterprise Court, England and Wales, is impressive not only in its length (123 paragraphs) but also for the fact that the court was able to deal with so many legal and evidential issues in just two hearing days.  For those trade mark practitioners who have imbibed the mantra that, since the big countries in the European Union are quite commercially significant as a proportion of the EU, genuine use of a mark in just one of those countries constitutes genuine use of a CTM, there is something of a surprise in store.

    DFS subsidiary Sofa Workshop was a retailer of sofas and other furniture, as was Sofaworks. Sofa Workshop traded under the name “Sofa Workshop” and also owned two Community trade marks (CTMs) for the words SOFA WORKSHOP, which between them covered goods and services relating to various forms of furniture and accessories in Nice Classes 18, 20, 24 and 35. Sofaworks traded under the name “Sofaworks”.

    Said Sofa Workshop, given the similarity of trading names and the fact that both businesses were competing in the same market, there was a likelihood of customer confusion. Accordingly Sofaworks both infringed its two CTMs and passed itself off as being associated with Sofa Workshop. No way, said Sofaworks. First, both the CTMs were invalid since the words SOFA WORKSHOP were both descriptive and lacking in distinctive character. Even if they were valid, they were liable to be revoked for non-use on the basis that there had not been a genuine use of those marks within the European Community.

    Responding to the allegation of invalidity, Sofa Workshop argued that (i) even if its mark were descriptive and non-distinctive for sofas, that wasn’t the case for the other goods for which those marks had been registered, (ii) in any event, its marks had acquired a distinctive character in relation to sofas and (iii) even if its CTMs had not acquired any distinctive character, their specifications could still be appropriately narrowed in order to neutralise the objection by eliminating those goods and services in respect of which they were held not to possess distinctive character.

    Judge Hacon delivered a judgment of Arnoldian proportions in which he surprised this Kat and probably more than a few other readers by ruling that the marks were invalidly registered (that’s not the surprising bit) and that, if they had been, they would have been liable for revocation for lack of genuine use in the EU (that’s the surprise).  However, the last laugh — if a rather expensive one — went to Sofa Workshop in that Sofaworks was held liable for passing off.  Taking a closer look at the judgment:

    Validity of the CTM registrations

    It was not in dispute that the words ‘sofa’ and ‘workshop’, taken separately, had well-established meanings in the mind of the average consumer: a ‘sofa’ was an item of furniture for sitting on and a ‘workshop’ was a place where goods are manufactured or repaired and from which they may be sold.

    How did the average consumer perceive this combination of words? There was evidence that ‘sofa workshop’ was used as a descriptive term by traders in the sofa business and that another 41 furniture-related businesses in the UK used the word “workshop” in their business names. Sofa Workshop itself used the term ‘workshop’ descriptively in its advertising, to indicate the type of place in which its products were made and also to emphasise the higher quality and greater flexibility in manufacture which was a consequence of the products coming from a workshop. Accordingly both CTMs consisted exclusively of signs which may serve in trade to designate a characteristic of some of the goods for which those marks are registered and were thus invalidly registered.

    Had the CTMs acquired distinctive character after they were registered?

    There was a great deal of evidence of use of the trade name SOFA WORKSHOP in the UK by Sofa Workshop since 1986. While use of a mark does not necessarily translate into that mark becoming distinctive of the user, in the absence of any other candidate mark by which consumers might identify the origin of the goods or services, the substantial use of a mark is a good start to proving that it has acquired distinctiveness.

    This evidence related to use and distinctiveness of the marks in the UK and the judge was therefore satisfied that by 19 May 2014, when Sofaworks filed its counterclaim for invalidity, the mark SOFA WORKSHOP had acquired in the UK a distinctive character in relation to sofas and related goods.

    This did not however help Sofa Works. since a mark which is descriptive to a native English speaker is liable to be equally descriptive elsewhere because of the widespread use of English in other Member States of the European Union, including the Scandinavian countries, the Netherlands and Cyprus in addition to Ireland and Malta, where English was an official language. There was no evidence though that the words SOFA WORKSHOP had acquired a distinctive character on account of their use in any of those countries. This being so, there was insufficient evidence to establish validity of the two Community trade marks through the acquisition of distinctive character.

    Revocation of the CTMs for non-use

    From a review of the case law of the Court of Justice of the European Union (CJEU) and especially the ONEL/OMEL case [Case C-149/11 Leno Merken, noted by the IPKat here], it appeared that the law was as follows: (i) the question of whether there has been ‘genuine use in the Community’ is not to be approached from the perspective of whether there has been use of the mark in more than one, two or any other particular number of EU Member States, since territorial borders are to be disregarded; (ii) a CTM is put to genuine use in the EU where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, and used for the purpose of maintaining or creating market share within the Community for the goods or services covered by the mark; (iii) whether the mark has been so used will depend on all relevant facts and circumstances, including the characteristics of the market concerned, the nature of the relevant goods and services, the territorial extent and scale of use, and the frequency and regularity of use; (iv) purely in relation to the territorial extent of use, genuine use in the Community will in general require use in more than one Member State; (v) an exception to that general requirement arises where the market for the relevant goods or services is restricted to the territory of a single Member State.

    Here there was no dispute that Sofa Workshop had put its CTMs to genuine use on an extensive scale in the UK in the five year period before the counterclaim for revocation, but there was no evidence that any of Sofa Workshop’s advertising and advertorial publicity was directed at consumers outside the UK even though it was accessible to them, and there was only evidence of one non-UK sale ever being made.  On that basis the CTMs had not been used by Sofa Workshop in the five year period in order to maintain or create market share within the EU for the goods or services covered by the marks. Consequently those registrations were liable to be revoked.

    Amendment of the specifications of the CTMs

    In the event that the CTMs were valid and should not have been revoked, the proposals for the narrowing of the specification for the goods and services in respect of which they were registered, on the terms suggested by Sofa Workshop, would have been allowed.

    Infringement

    On the evidence and following an extensive review of the law, it was established that, among a proportion of relevant actual consumers, which was well above de minimis although markedly less than half the total, there existed a belief that, because of the similarity between Sofa Worshop’s CTMs and Sofaworks’ trading name, the respective goods of Sofa Workshop and Sofaworks came from the same or undertaking or from economically-linked undertakings. This being so, at least one essential function of Sofa Workshop’s CTMs — the guarantee to consumers of the origin of the goods or services — was materially damaged and would be further damaged if the court did not intervene.

    It is probable that the same conclusion applied with regard to the functions of Sofa Workshop’s CTMs as providing a guarantee of quality of their goods and services. Consequently, if those marks had been validly registered and had not been liable to be revoked, they would have been infringed.

    Passing off

    For the reasons stated in relation to whether Sofa Workshop’s CTMs had acquired distinctive character in the UK, Sofa Workshop had goodwill in its business there which was associated in the public mind with its trading name ‘Sofa Workshop’. Notwithstanding the descriptive qualities of that trading name when used in relation to sofas and related goods and services, it had still acquired a secondary meaning in the mind of the relevant British public in England and Wales, as a badge of origin for such goods and services

    As to the proportion of the relevant public to which Sofaworks’ trade name must constitute a misrepresentation, this had to be sufficient to cause material damage to the goodwill of Sofa Works, as was the case here. Thus, for the reasons given in relation to infringement of the CTMs, Sofaworks’ use of its SOFAWORKS sign resulted in a representation to a proportion of the relevant public in England and Wales that the goods and services of Sofaworks came from a source which was the same as, or was associated in the course of trade with, Sofa Workshop. That proportion was sufficient for Sofaworks’ acts to cause material damage to Sofa Workshop’s goodwill. It therefore constituted a substantial proportion, that is to say enough to warrant a finding of misrepresentation on the part of Sofaworks. Accordingly Sofa Workshop succeeded in its claim for passing off.

    Kat comments

    Says this Kat, the judge’s position on revocation is one on which many people would like to see the Court of Appeal’s view, and there is so much law in this judgment as a whole that it should not be difficult for a reasonably competent lawyer to find some slant, some shade of meaning, some nuance, some verbal formula in which the judge “couched” his ruling that would provide a basis upon which to launch an appeal.  However, it is quite likely that this will not happen.

    Sofa Workshop may be content to let the decision go since,  after all, the company won the action on the ground of passing off and it may be best advised either (i) to carry on using its SOFA WORKSHOP, teaching the public to think of it as a trade mark and not as a non-distinctive descriptor in all relevant English-speaking countries and then to re-apply for a CTM on the basis of well-evidenced acquired distinctiveness, or (ii) to focus its use on the UK alone and apply for a national trade mark.

    Sofaworks may be content to let the decision go too, since the decision on passing off looks rock-solid and the other issues went in its favour. More significantly, the company has already indicated that it would be easier for it to change its name than to appeal, since its attraction for its customers lies in the store’s concept rather than in its (descriptive) name and it has already spent some £500,000 in legal fees when defending these proceedings.

    Cat-proof sofa here and here
    Cat trapped in sofa here
    Cat-friendly sofa here

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  • TPP、知財・投資は難航 閣僚会合で判断へ – 日本経済新聞

    TPP、知財・投資は難航 閣僚会合で判断へ
    日本経済新聞
    環太平洋経済連携協定(TPP)の全体交渉で難航する(1)知的財産(2)国有企業(3)投資(4)法的・制度的事項の「例外」分野――の4つは、7月最終週にも開く閣僚会合での決着が必要だ。 最難関となりそうなのが知的財産。特に医薬品の製造に欠かせないデータの保護期間が …

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