TIPLO House of Lords First meeting of 2009 – 18 February

“Whither a law of privacy”

TIPLO members and guests were once again delighted to enjoy the surroundings of the House of Lords as guests of Lord Scott for the first TIPLO Dinner meeting of 2009. With the topic to be addressed being a highly controversial one and given the identity of the speaker as The Hon. Mr Justice Eady, not surprisingly it was a full house.

 

The Hon Mr Justice Floyd presided over the meeting and introduced Mr Justice Eady who then gave us a whistle-stop tour of the history and development of the law of privacy in the UK, through some informative insights based on his own close involvement with both the policy issues as well as some of the key cases over the years. This took us from the 1980/90’s when tabloid intrusion into private lives arguably first started to cause significant public disquiet right up to the present day. Memories were stirred when Mr Justice Eady referred to some of the cases in the 1980’s and 1990’s. One of these involved long distance photographs were taken through a hospital window of a very ill Russell Harty which were then published in the press. There was also an incident where the Sunday Sport published photographs of and also purported to carry out an interview with Gordon Kaye who was recovering from brain surgery. That case went to the Court of Appeal which remarked on the absence of the law of privacy in the UK. It was not possible at that stage for a remedy to be obtained.

As a reaction to cases like these the Calcutt Committee was then set up by the Government. It proposed the abolition of the Press Council and the setting up of the Press Complaints Commission. The possibility of introducing a new statutory remedy was considered but the view was reached that it would be too difficult to make it precise enough to be of real value. It was therefore at that time left effectively on the basis that the judiciary should develop the common law to deal with the position.

 

The developments which then occurred for the next decade were more or less confined to cases where there was a pre-existing relationship which could mean there was an express or implied obligation of confidence. The next real development of the law was after 2000 when the ECHR came in directly to UK law. This was the 2004 Naomi Campbell case in the House of Lords which, as we all know, handed out a 3 to 2 result broadly in favour of protecting a party who could assert that they had a reasonable expectation of privacy. Mr Justice Eady then rehearsed some of the key principles coming out of that case.

1. The law would enforce a reasonable expectation of privacy.

2. This could be enforced horizontally by means of Article 8 between citizens. This meant that private citizens could take action against the media.

3. In resolving the conflict between the competing Convention rights – freedom of speech versus right to a private life – neither of these rights took precedence over the other

4. It was for the court to weigh up the competing interests and carry out the ultimate balancing exercise with any overriding public interest.

5. Applying generalities such as the idea that if someone was a role model they were entitled to some lesser degree of privacy or that if someone had sought publicity in the past it was possible for journalists to behave as if they were fair game, did not necessarily work.

Clearly much has happened in this area of the law since the 1980’s and as a result of the developments it is reasonably clear that in cases like those of Harty and Kaye a remedy could now relatively easily be acquired and they would in all likelihood be decided quite differently now.

 

 

There followed a very lively question and answer discussion session with views on this area being very varied indeed. Some of the topics discussed and debated were as follows. Does the “pint of milk” test work? i.e. Should celebrities be able to go out and get a pint of milk and not be bothered by the paparazzi? If everyone can see the celebrity in the street then why can the Press not take a photograph and publish it?

Should anything taking place in a public place be fair game? Alternatively should the UK follow the lead of Strasbourg and the Princess Caroline case? If the latter case were to be followed would this mean a whole cultural change in the UK?

Is there a need for more regulation of the UK Press or is what is there by way of self-regulation enough? Should there be a jury role? How high should damages be?

These were just some of the issues that were raised and debated. All in all it was a highly stimulating talk by Mr Justice Eady and TIPLO is very grateful to him, to Lord Scott and Mr Justice Floyd for attending and contributing hugely to a very enjoyable and informative evening.

TIPLO would like to thank Gill Grassie for the summary.

Gill Grassie gill.grassie@mms.co.uk

Partner
IP & Technology Department, Maclay Murray & Spens LLP

Lincoln’s Inn Old Hall -3^rd December 2008

Quintessential Christmas Quiz”

It is hard for me, as a founder member to believe that TIPLO has been going strong for 13 years! When I consider the many excellent events and speakers we have organised then it doesn’t seem to be so surprising, but
it was excellent to be able to look back over what is now a really well established and focussed organisation, confirm that TIPLO events really have achieved a regular place in IP lawyer’s “must do” diaries.

The event was tinged with great sadness as all attendees keenly appreciated that one place was empty, and one very warm, witty and much loved man was missing from the guest list. Professor Sir Hugh Laddie passed away only a fewdays ago, after a long battle with cruel illness. He will be deeply missed by all who knew him and none more so than his very long standing friend, colleague and “sparring Partner” – Lord Justice Robin Jacob.Robin addressed the gathering briefly at the outset, and recalled how he and Hugh had themselves opened proceedings at the very first TIPLO event, in the same Old Hall, 13 years ago. In Hugh’s memory, we all raised a glass, and observed a few moment’s silence. In that time I am sure we all called to mind images and recollections of Hugh, many of them during the happy times of the numerous TIPLO events he chaired, attended and contributed to. I commend to readers the excellent Memorial Section of the UCL’s website dedicated to Hugh, and a link appears on the NEWS PAGE. UCL will collate all the comments, memories and memorial messages added , and in due course they will be passed onto Hugh’s widow and family.

The evening moved on to happier thoughts and pursuits as Quiz Master Extraordinaire Antony Watson QC chaired proceedings and ensured that everyone present entered into the true spirit of competition and fun. The devilishly difficult Quiz which contained wide ranging and sometimes wholly
obscure questions had been fiendishly devised by Ann Critchell-Ward and her team from Freeth Cartwright LLP.

However tricky the questions, the Quiz proved little match for the awesomely impressive combined intellect of the table gathered under the team Leadership & Banner of Lord Hoffman. ( No surprise there !). “Lenny’s Legal Beagles ” romped home with an impressive margin of points to victory, and each earned themselves a bottle of tip top Champagne. It was nice to note that far from rushing home to consume their fairly gotten gains and booty, the winning team members shared their good fortune and fizz with the less brainy members of other neighbouring tables !

The Hall had been beautifully decorated, with the magnificent Christmas tree dominating the South entrance. Lincoln’s Inn chef and waiting staff put all others to shame, in producing a truly splendid festive feast which in true TIPLO tradition was appreciated by all. As ever the evening proved an excellent opportunity to meet with friends , old and new, exchange news and , dare I say , also a little gossip !

As ever, the evening’s events had been skilfully guided and organised by our excellent Group Secretary Renate Siebrasse, who would be delighted to hear from members regarding events for next year, and suggestions for topics and speakers . The next scheduled event is Februray 18^th
2009 at the House of Lords – a date for your New Year diary !!

Denise McFarland Three New Square Chambers www.3newsquare.co.uk

HOUSE OF LORDS October 2008

“IMITATION = IRRITATION !”

TIPLO’S annual event hosted by its chairman, Lord Hoffman, at the House of Lords, was very well attended on Thursday 2^nd October 2008. The theme adopted by the speakers was;

“A view from the “coalface” - experiences, problems, and policies and dealing with anti-counterfeiting measures and punishment.”

His Honour Judge Michael Fysh of the Patents County Court opened proceedings as Chairman. He commenced by thanking TIPLO Chairman Lord Hoffmann for hosting the event and warmly congratulated newly appointed High Court Judge - Richard Arnold who was present as a guest. Mr Justice Richard Arnold will join Mr Justice Christopher Floyd his former colleague at 11 South Square as the most recently appointed specialist patent Judges. TIPLO hopes to tempt the new Patents Judges to contribute to forthcoming TIPLO events in the near future.

Judge Fysh indicated his own general view of the recent surges of counterfeiting problems made him feel rather depressed. He had first hand experience of the Russian Market in particular and feels it is difficult to see light at the end of the tunnel. He reminded the audience that it is not only fake luxury branded and fashion items which flood the market but also fake spare parts and counterfeit pharmaceuticals, which carry with them enormous health and safety implications. He also warned of the stimulation of funding for criminal activities and possibly terrorism connections with the “pirate economy”. From his own experience of “regular” civil court penalties (including injunctions and destruction on oath) he recognised that there was room for improvement.

The first main speaker was Elizabeth May a former Solicitor with Field Fisher and now an in house attorney Richmont. Richmont are associated with the luxury brands such as Dunhill, Cartier and Mont Blanc. Elizabeth’s wide ranging experience in tackling piracy and counterfeiting made for a stimulating and interesting talk. She is also a leading member of INTA and is a member of one of INTA’S 25 committees made up of voluntary members. Elizabeth serves on the ACEC committee which is the Anti-Counterfeiting & Enforcement Committee.

Apparently INTA was founded in 1878 by 17 merchants who felt the need to develop a group specifically to assist traders, and brand owners. It has grown enormously and now has members from 190 countries. Apparently 27% of INTA members are European although the headquarters is based in New York.

A theme of Elizabeth’s address was the need for greater international co-operation. She and INTA believe that more needs to be done to strengthen the framework to prevent such crimes, and address harmonisation of criminalisation for counterfeiting activities and criminal sanctions. In particular she said that counterfeiting and piracy should be recognised as a transnational organised crime. There should be a standardisation to criminalise the proceeds of crime gained by counterfeiting, and basic sanctions and punishment should be increased so that a minimal penalty level applies globally on a harmonised basis. Currently the vagaries and discrepancies do create havens for counterfeiters and penalties simply do not effectively work as sufficiently strong disincentives.

Elizabeth also stressed the need for increased awareness and Education of the policy issues associated with counterfeiting. Apparently the negotiators of ACTA (The Anti-Counterfeiting Trade Agreement) have met and are in early stages of progressing matters. At their next meeting it seems that criminal enforcement will be discussed. At present it is not clear how the ACTA initiative will develop.

Elizabeth also pointed out that, leaders in the industry and others with an interest in anti counterfeiting need to put pressure on the EU Commission to progress draft directives striving towards international harmonisation.

Elizabeth commented on how high profile initiatives have caught the public’s imagination. In particular she cited the example of Jackie Chan the Martial Arts Hollywood star who fronted up a Hong Kong Based “stop fakes” initiative and the well known fashion magazine Harpers Bazaar who have encouraged readers to shun counterfeits, highlighting in particular the shameful child labour problems associated with many fashion counterfeit products.

Finally Elizabeth talked the audience through her recent specific experiences in dealing with counterfeits in the Dubai market. As she explained, Dubai is a luxury Centre and a tourism hotspot. It is rapidly developing and acts as a trans-shipment hub close to both the source of many counterfeit markets and the outlets markets of Europe.

The second main speaker of the evening was Paul Bannister a Senior Trading Standards Officer based in West Lanarkshire, Scotland. Paul initially pointed out that as an Englishmen he effectively has a foot in both camps, with experience of trading standards issues and Criminal Law, both north and south of the border. He reminded the audience briefly of the peculiar History of the Scottish legal system dating back to the 12^th Century and the particular continental influences that have moulded the Scottish legal system. In particular and despite the Act of Union of 1707 the Scots have retained an independent legal system.

Unlike the criminal system of justice in England and Wales which permit private prosecutions to be brought, in Scotland only the Procurator Fiscal is permitted to prosecute. Further, and in contrast to the system in England and Wales, Scottish prosecutions require corroborated evidence on all material fact. The particular requirement for corroborated evidence makes it harder for trading standards officers in Scotland than England, particularly in areas where there is only a single trading standards officer responsible for a particular geographical area.

Further, the very busy Courts in Scotland create an increased backlog and delay in finally resolving matters. Paul pointed out that sanctions and sentencing are not always equally applied across the entire jurisdiction and despite a massive increase in counterfeiting activities unfortunately the trading standards own officers and resources have decreased. The lack of resources is compounded in Scotland where trading standards departments cannot bid for POCA proceeds (unlike in England and Wales.) However, despite such difficulties , Paul described an active and resourceful trading standards dynamism in Scotland; as he put it by adopting a “can do attitude” positive results can be achieved. He particularly recited a case dating back to 2006, which interestingly still awaits a date for its full trial and resolution, in which an EBAY trader and courier company selling counterfeit clothing and other items were found to be linked. The businesses in question were found to be associated with over a £ million worth of turnover in counterfeit goods .

By engaging in a joint operation and co-operation with the local police forces and acting on rapid intelligence gathering techniques , Paul was able to co-ordinate and be involved in a successful operation which utilised the resources of 36 officers from trading standards and the Police. As a result financial restraints were placed on pay-pal accounts and 6 Bank accounts. Paul’s success in this operation was in part due to the excellent level of co-operation with other law professionals but also by adopting the old adage of “follow the money” to achieve the result .

Paul reminded the audience of the importance of having excellent evidence gathering skills and personnel in particular in relating to trap purchases and the provision of invoices. He indicated how IP owners could help trading standards officers by providing up to date information of product examiners, bulletins regarding the trends in crime, up to date contact details and an indication if there are any particular problems related to specific e-businesses, such as GUMTREE or EBAY.

On a more positive note, Paul indicated that a recent initiative to trial so-called “Scam Buster Teams” in local areas has been successful and such initiatives are to be imposed across Scotland shortly. However he did call for a national service in the future with dedicated enforcement units and Cyber crime officers. Echoing the earlier speaker he also stressed the importance of education in particular to encourage the public to understand that IP theft is wrong counterfeiting is bad and has negative social and economic implications for all, in particular those venerable groups that are often forgotten.

The question session at the end provoked some interesting commentary, in particular from a member of ACID, and a Practitioner with recent first hand successful experience of bringing a private anti-counterfeiting prosecution within the English Courts.

His Honour Judge Fysh brought matters to a conclusion with his own closing comments which echoed many of the issues raised by the speakers. A consensus seemed to be that a key issue is the persuasion of members of the public that supporting the pirate economy is not simply a “harmless matter” to be considered in a light hearted manner, but is a seriously wrongful act and has damaging social and economic implications.

Denise McFarland (UK Barrister)Three New Square Intellectual Property Chambers –Lincoln’s Inn - LONDON

www.3newsquare.co.uk

TIPLO Dinner Meeting , June 11^th 2008, Gray's Inn

Pharmaceutical Regulation and the Protection Of Innovation

Against the backdrop of the Hall, Gray’s Inn, the recent evening meeting provoked an animated debate following the excellent address by Ian Dodd-Smith of Arnold & Porter. The event was chaired by Lord Justice Jacob, who concluded that Mr Dodd-Smith had delivered an “astonishing and excellent piece” by his speech which highlighted the need for the European Commission “begin to understand the economics of this [ pharmaceutical] industry”. Lord Justice Jacob and the assembled members of TIPLO and guests were so impressed with Mr Dodd-Smith’s comments that there have been calls for his speech to be published verbatim. We will provide details if and when this happens.

He managed to convert what can be an essentially dry and rather complex topic into a stimulating and though provoking series of well analysed and brilliantly researched commentaries. The audience were taken through the recent history of the development, challenges and changes to the regulations and prompted to consider the interaction of political, commercial and moral issues which surround this area. The exceptions for so called “orphan drugs” and paediatric care pharmaceuticals demonstrate the ability of the EU to follow the lead often provided by the USA, and suggestions from Mr Dodd-Smith and the audience indicated that the time may be nigh when we see extended patent life protection for certain pharmaceuticals in an effort to protect and engender innovation. As our speaker put it, “ both IP and competition law should foster innovation but protect consumers”. However, the practicalities are much more complex than the theories. This are of law has seen a plethora of references to the ECJ, but with such references have come delay, increased costs and further “fuzziness” as Lord Justice Jacob put it ; lack of legal certainty as to interpretation and effect of the regulatory provisions. It was suggested that the pharmas face a “minefield” of “ever changing guidelines and judicial guidance”.

We were reminded that this are of law is bigger than Europe and the global implications are felt across the worldwide industry. However, England is leading the field insofar as the English High Court have made many of the recent ECJ references, although our speaker concluded by asking the question, “ Is the European Court really fit for its current purpose ?” He is also concerned that the recent policy changes have not favoured innovators, and that generally there is room for amendment of the regulations and regulatory framework to provide a more proportionate protection to the huge investments required.

Reportprepared by: Denise McFarland, Barrister, Three New Square Intellectual Property Chambers, www.3newsquare.co.uk

TIPLO Committee & Founder Member.

‘Toys & Trade Marks, Shops and Signs – News from Europe’

 TIPLO’s first dinner meeting of 2008 at Gray’s Inn was very well attended – the topic, speaker and panel all acting as a major draw.

On a more sad note, and most importantly, at the outset of the meeting Sir Robin Jacob as a close friend and colleague of Sir Nicholas Pumfrey announced that TIPLO were in his memory making a one-time donation to the London Beekeeper’s Association and a per annum payment for a five year period to the Scholarship Fund of the Middle Temple. Sir Nicholas was a keen bee keeper himself and a Bencher of Middle Temple. This was followed by a one minute silence in memory of Sir Nicholas who was a great supporter and regular attendee of TIPLO meetings and will be deeply missed.

After this and a wonderful dinner Stephen James, Partner at Jenkins (and former Chairman of ITMA) in the Chair introduced Paul Bullock, an Examiner at OHIM and European Advocate as our main speaker. Allan James as head of inter-parte proceedings at UKIP assisted on the panel taking questions after the talk.

Paul Bullock took the floor and spoke on two of the most controversial recent trade mark decisions of the ECJ in recent times. The first was the Adam Opel case dealing with the use of trade mark Opel logo on a replica scale model car and second the Celine case, dealing with the mark Celine used as a company and shop name in connection with the marketing of clothing which was the category in which the mark was registered.

Paul was generally supportive of the ECJ decision in the Opel case. He highlighted that it was important to note that the scale models had been sold under the trade mark CARTRONIC. In addition the court clearly took into account the very specific nature of the market concerned which was Germany where Paul made the point evidently Judges are well-accustomed to playing with remote controlled toy cars in their spare time! Apparently in Germany the average consumer is accustomed to scale models being based on real examples. German consumers would understand that the appearance of the Opel logo on the third party’s products indicate that it is a reduced scale reproduction of an Opel car and would not be confused and associate it with Opel. The ECJ decided in these circumstances that where a trade mark is registered both for motor vehicles - in respect of which it is well known - and for toys the trade mark owner is entitled to prevent its use on scale models only if that use affects or is liable to affect the essential origin indicating function of a trade mark.

Paul’s view was that the ruling in general terms followed the basic rules of common sense, albeit it does clearly limit the possibility for real car manufacturers to prevent the toy industry from producing and marketing toy cars bearing signs which coincide with the car manufacturers registered trade mark. Thus if the way in which the logo is used does not attempt to indicate the commercial origin but is merely used as an essential element of a true and precise scale replica then such use cannot be prevented.

Paul made the point that it would seem unfair to grant a monopoly on scale models of their grown up products as this would prevent competition and restrict the market especially in respect of the more desirable brands. One of the practical implications of the ruling is that manufacturers of scale models will not necessarily need to seek consent to use registered trade marks for their replicas. This is because the court suggested that if because of the way the sign is used and the circumstances surrounding such use, the public did not perceive the sign as an indication that the models come from Opel or a linked undertaking, there was no confusion as to origin. Paul noted too that the court acknowledged the manufacturers’ concern that poor quality replicas might severely affect the image and reputation attached to its well known trade mark by stating that the trade mark owner would be able to prevent use that without due cause to unfair advantage of or was detrimental to the distinctive character or repute of the trade mark etc. Paul’s view was that all in all the decision was the correct one.

Celine

In the Celine case the ECJ decided that where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which has been carried out such use cannot be considered as being in relation to goods or services and cannot be prevented. This case was all about the clothing market. Although Paul was at pains to point out he is no expert on fashion(!) (but was complementary about the tastes of some of the members of the TIPLO audience) he understood enough about the nature of that market to know that the public tend to associate the names of the outlets and trade names with the trade marks. The Court also appeared to be aware of this and that given the specific nature and structure of that market and the way clothing items are sold the distinction between trade marks on the one hand and other business identifiers such as company names, trade names etc, shop names, tends to fade away. Consumers are likely to perceive all the signs as indicating a common origin. The court therefore went on to consider the honest practices defence. In that exercise it decided that account had to be taken both of the extent to which the use of the third party’s name is understood as a link between the third party’s goods and services and the trade mark proprietor and the extent to which the third party ought to have been aware of that perception. Another factor is the possible reputation of the registered trade mark from which the third party might profit.

Paul highlighted the contrast between the approach of the ECJ where the trade mark owner must tolerate the honest use of an identical mark in the same field of activity as against the relative ease with which the owner of a prior company name, trade mark or shop may successfully oppose a later CTM application for an identical mark etc. Essentially Paul indicated that it might all come down to at the end of the day whether there is a likelihood of confusion in the mind of the relevant public and there would still be much work to be done by the national courts in assessing things on a case by case basis.

There followed a lively debate mainly on the Opel decision with interesting contributions from inter alia Catriona Smith of Allen & Overy and Anna Carboni. Sir Robin Jacob as ever added his unique thoughts to the debate and Stephen James and Allan James also gave their take on some of the issues raised. Overall it was more than clear that these decisions have created significant controversy in UK IP circles and there is no agreed right way to go. No doubt, like a well tuned Opel motor car, and this one will run and run !

Our thanks go to Gill Grassie, TIPLO committee member & Partner in the firm of MMM for the report & to Denise Mcfarland for additional input.