Overlapping Intellectual Property Rights 0199696446, 9780199696444

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OVERLAPPING INTELLECTUAL PROPERTY RIGHTS

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OVERLAPPING INTELLECTUAL PROPERTY RIGHTS Edited by

Neil Wilkof Shamnad Basheer

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Great Clarendon Street, Oxford, OX2 6DP, United Kingdom Oxford University Press is a department of the University of Oxford. It furthers the University’s objective of excellence in research, scholarship, and education by publishing worldwide. Oxford is a registered trade mark of Oxford University Press in the UK and in certain other countries © The Editors and Contributors, 2012 The moral rights of the authors have been asserted First Edition published 2012 Impression: 1 All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, without the prior permission in writing of Oxford University Press, or as expressly permitted by law, by licence or under terms agreed with the appropriate reprographics rights organization. Enquiries concerning reproduction outside the scope of the above should be sent to the Rights Department, Oxford University Press, at the address above You must not circulate this work in any other form and you must impose this same condition on any acquirer Crown copyright material is reproduced under Class Licence Number C01P0000148 with the permission of OPSI and the Queen’s Printer for Scotland British Library Cataloguing in Publication Data Data available Library of Congress Cataloging in Publication Data Library of Congress Control Number: 2012939892 ISBN 978–0–19–969644–4 Printed in Great Britain by CPI Group (UK) Ltd, Croydon, CR0 4YY Links to third party websites are provided by Oxford in good faith and for information only. Oxford disclaims any responsibility for the materials contained in any third party website referenced in this work.

PREFACE The idea for this book derived from teaching a class nearly a decade ago. The student asked Neil a simple question: how does the law handle a situation where an artistic work is protected both as a trademark and a copyright? Neil found himself stumbling to find an answer. Even more worrying was the fact that there was a severe paucity of secondary literature. The trademark/copyright overlap led to ruminations about intellectual property overlaps more generally and with that came the unformed urge to do a book on the subject. At least half a decade passed and Neil was making little progress with this project. Being convinced that the best way to handle the subject was through separate chapters on various intellectual property overlaps, each written by an expert on the subject-matter of the specific pair of rights, he sought a co-editor. Shamnad Basheer, an intellectual property scholar from India with a substantial background in intellectual property practice, seemed to be the perfect candidate. (Since both Neil and Shamnad had improbably both spent time in the past at the University of Illinois, Urbana-Champaign, fate seemed to be sending a clear message.) Neil then approached Shamnad with the offer to co-edit such a volume and Shamnad gladly accepted, blissfully unaware of the volume and intensity that such a task entailed. We then took the idea to Oxford University Press and, after a rigorous review process, it embraced the publication of this book. And thus was born this labour of love. This book’s journey, like any other journey of challenge, has seen many a trough and a crest. Thankfully we survived, owing to the wonderful support that we received from a large number of good-hearted people. Two people in particular merit mention. First, we wish to express our sincere gratitude to Luke Adams, who served as the original commissioning editor and guided us through the challenging process of formulating the proposal through to approval. Secondly, our heartfelt appreciation for the wonderful work by Sophie Barham, who took over the project and whose exemplary efficiency and skill in handling over 40 contributors saw the book to completion on time. Sophie has given new meaning to the word ‘indispensible’. Every project of this kind also needs a wise man, lurking in the background, who is always ready to offer a helping hand when called upon. Dr Jeremy Phillips was our wise man. In a word—thanks. We also wish to thank Shan Kohli, Jay Sanklecha, and Autri Saha, students of The National University of Juridical Sciences, Kolkata, and Levona Lavi, a student at Monash University in Melbourne, Australia for their help with preparing some of the chapters.

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Preface At the end of the day, this book is all about the work of the various contributors and those who prepared the comparison tables for the various jurisdictions, who were all asked to give form and content to the editors’ vision. We have been fortunate that those who accepted the challenge have carried it out with aplomb, style, and profundity of thought. We hope that you are all pleased with the results. Neil Wilkof Ra’anana, Israel Prof. Shamnad Basheer Kolkata, India

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CONTENTS List of Contributors Table of Cases Tables of Legislation Introduction

xiii xxv xliii lv

1. Navigating the Interface between Utility Patents and Copyrights Andrew P. Bridges A. Hypothetical B. Conceptual Interplays between Utility Patent and Copyright Law C. Practical Considerations in Choice of Protection and Enforcement D. Conclusion 2. The Overlap between Patent and Design Protection David Musker A. Hypothetical—the Circular Beach Towel B. Do Overlaps Matter? C. Patent/Design Anti-overlap Provisions D. Systemic Cross-Links E. Patents and Designs—Twins or Antonyms? F. Design Law Exclusions G. The Circular Beach Towel Revisited

1 1.01 1.04 1.37 1.91 23 2.01 2.07 2.30 2.36 2.48 2.98 2.136 57

3. Patents and Trade Secrets Lionel Bently A. Hypothetical B. Introduction C. Preferring Trade Secrecy to Patents D. Trade Secrecy Prior to Patenting E. Trade Secrecy Alongside Patents F. Conclusion

3.01 3.04 3.06 3.58 3.78 3.82 83

4. Interfaces in Plant Intellectual Property Mark D. Janis A. Hypothetical B. Conceptual Overview C. Analysing Interface Issues in Plant Intellectual Property D. Conclusion E. Summary

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4.01 4.02 4.06 4.61 4.62

Contents 105

5. Patents and Utility Models Robert Harrison A. Hypothetical B. The Utility Model C. Protection in Germany D. Utility Models Worldwide E. The Australia Innovation System F. A European Proposal G. Examination H. Division/Branching I. Level of Inventiveness J. Conclusion K. Summary

5.01 5.04 5.06 5.11 5.16 5.22 5.27 5.31 5.35 5.41 5.44

6. Patents and Regulatory Data Exclusivity for Medicinal Products Duncan Curley and Marleen H.J. van den Horst A. Hypothetical B. Introduction C. The EU Battleground: Data Exclusivity, Patents, and Supplementary Protection Certificates D. Conclusion E. Summary 7. When Copyright and Trademark Rights Overlap Craig S. Mende and Belinda Isaac A. Hypothetical B. Conceptual Overview C. ‘Reality’—How the Interface Plays Out in the UK and US D. Conclusion E. Summary 8. The Design/Copyright Overlap: Is There a Resolution? Sam Ricketson and Uma Suthersanen A. Hypothetical B. The Meaning of ‘Design’ C. Berne Convention D. The Paris Convention for the Protection of Industrial Property E. TRIPS Agreement F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface G. Efficacy of Sui Generis Design Law H. Summary

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119 6.01 6.02 6.10 6.60 6.61 137 7.01 7.03 7.39 7.91 7.95 159 8.01 8.02 8.09 8.35 8.41 8.44 8.82 8.95

Contents 9. Overlapping Forms of Protection for Databases Jonathan Band and Brandon Butler A. Hypothetical B. Conflicting Models of Database Protection C. The European Union Database Directive D. The United States E. International Agreements F. Summary 10. Moral Rights or Economic Rights? Mira T. Sundara Rajan A. Hypothetical B. Moral Rights: A Definition C. The Importance of the Issue: A Common Law Perspective on Moral Rights D. The Theory Behind the Rights: Monism or Dualism? E. The International Arena: From Dualism to Realism F. Technology Dissolves Boundaries between Rights: The WIPO Internet Treaties G. The Future: A Unified Author’s Right? 11. Protection of ‘Famous’ Marks under Trademark Law and Passing Off David Llewelyn A. Hypothetical B. Introduction C. Passing Off D. Trademark Law E. Back to the Hypothetical F. Summary 12. Overlapping Rights in Designs, Trademarks, and Trade Dress Alan S. Nemes and Anna Carboni A. Hypothetical B. Introduction C. The United States D. The European Union E. Practical Advice and Insights 13. Overlaps between Trademarks and Geographical Indications Dev S. Gangjee A. Hypothetical B. Conceptual Overview

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189 9.01 9.03 9.16 9.39 9.69 9.75 209 10.01 10.02 10.07 10.22 10.44 10.50 10.63

231 11.01 11.05 11.07 11.34 11.70 11.73 251 12.01 12.02 12.04 12.39 12.92 277 13.01 13.03

Contents C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems D. Conclusion 14. Domain Names and Trademarks Mark V.B. Partridge A. Hypothetical B. The Conceptual Framework C. Practical Advice D. Application of Traditional Trademark Principles to Domain Names E. Application to Hypothetical F. Summary 15. Publicity Rights, Trademark Rights, and Property Rights Sheldon W. Halpern A. Hypothetical B. The Right of Publicity: Protecting the Associative Value of Persona C. Taxonomy, Categorization, and the Analogical Explosion D. The Right of Publicity as a Right Appurtenant: Constitutional and Intellectual Boundaries Attenuating Property Rights E. Trademark Rights as Rights Appurtenant: Property Rights in the Mark Itself F. Conclusion: A Functional Balance G. Summary 16. The Relationship between Trademark Rights and Unfair Competition Law Axel Nordemann and Tara Mooney Aaron A. Hypothetical B. Introduction C. Legal Background D. Slavish Imitations under Unfair Competition Law and Trademark Law E. Consumer Deception by Creating Confusing Similarity between Trademarks and/or Products under Unfair Competition Law and Trademark Law F. Comparative Advertising G. Discussion and Summary 17. The Relationship between Intellectual Property Rights and Competition Laws Thomas C. Vinje and Ashwin van Rooijen A. Hypothetical B. Introduction C. A Complementary Yet Tense Relationship D. Internal Balancing in Intellectual Property Rights E. Unilateral Refusals to License under Competition Law x

13.10 13.29 297 14.01 14.03 14.62 14.98 14.108 14.113 321 15.01 15.04 15.23 15.33 15.58 15.67 15.68 341 16.01 16.02 16.05 16.10

16.23 16.41 16.56

365 17.01 17.02 17.07 17.22 17.28

Contents F. Specific Issues Involving Standards: Patent Hold-up and the (F)RAND Defence G. Conclusion H. Summary

17.69 17.84 17.86 387 387 395 403 411 419 427 435 443 451 459 466 474 482 490 498 505 513

Comparison Tables Australia Brazil Canada China France Germany India Israel Japan Korea Mexico Netherlands Russia Singapore South Africa Turkey United Arab Emirates Index

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LIST OF CONTRIBUTORS Editors Shamnad Basheer is the Ministry of Human Resource Development (HRD) Professor in Intellectual Property law at the National University of Juridical Sciences (NUJS), Kolkata. He is the founder of SpicyIP, a blog dedicated to Indian intellectual property and innovation policy issues. This blog was rated as one amongst the 50 most influential IP personalities the world over by MIP (Managing Intellectual Property). He is also the founder of IDIA (Increasing Diversity by Increasing Access to Legal Education), a pan-India student movement to train underprivileged children for admission to the premier law schools. After graduating from the National Law School Bangalore, Shamnad Basheer joined Anand and Anand, a leading intellectual property law firm in New Delhi, where he rose to head the firm’s IT and telecommunications law division. He then went on to do postgraduate studies as a Wellcome Trust Scholar at the University of Oxford and transitioned to academia. However he continues to consult with law firms, governments, and intergovernmental institutions. In the past, he has been an IBA and an IPBA scholar and has published papers in leading intellectual property law journals. Shamnad Basheer was recently nominated as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). Neil Wilkof is a member of the Bressler Group, Ramat-Gan, Israel and he serves as special intellectual property counsel to Herzog, Fox & Neeman. He has been recognized by various surveys as a leading practitioner in the field of intellectual property and technology transfer. Neil Wilkof is the author of Trade Mark Licensing (2nd edition with Daniel Burkitt), is coeditor (with Melvin Simensky and Lanning Bryer) of Intellectual Property in the Global Marketplace, and is co-editor (with Ian D. Westbury) of Joseph J. Schwab: Science, Curriculum and Liberal Education, Selected Essays. Neil Wilkof has published numerous articles about intellectual law and practice and is on the editorial board of Intellectual Property Law and Practice. He has taught intellectual property law in several universities in the US, India, and Israel. Neil Wilkof is a graduate of Yale University, the University of Chicago, and the University of Illinois.

Contributors Tara Mooney Aaron is an intellectual property, technology, and entertainment attorneyat-law residing in Nashville, Tennessee. She co-founded the law firm of Aaron Sanders PLLC in July 2011. She graduated from the University of Tennessee College of Law as a member of Law Review and the Order of the Coif. Ms Aaron is a member of the Nashville Bar Association Intellectual Property Section and the Copyright Society of the USA Social Media Committee, and is a frequent speaker and writer on copyright and trademark law.

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List of Contributors Jonathan Band is an intellectual property lawyer in Washington, DC, specializing in legislative and appellate advocacy. He received a BA from Harvard College, and a JD from Yale Law School. For almost 20 years, Jonathan Band worked at the Washington, DC, office of Morrison & Foerster LLP, including 13 years as a partner. He established his own law firm in May 2005. Jonathan Band is an adjunct professor at the Georgetown University Law Center, and has written extensively on intellectual property and the internet, including the books Interfaces on Trial and Interfaces on Trial 2.0, as well as over 100 articles. Lionel Bently is Herchel Smith Professor of Intellectual Property Law, University of Cambridge; Director of the Centre for Intellectual Property and Information Law; Professorial Fellow, Emmanuel College, Cambridge; Barrister (IT 2009); door tenant, 11 South Square, Gray’s Inn, London. He is the co-author (both with Brad Sherman) of Intellectual Property Law (Oxford: OUP, 2001; 2nd edn, 2004; 3rd edn, 2008) and The Making of Modern Intellectual Property Law—The British Expericence, 1760–1911 (Cambridge: CUP, 1999). He is co-author of Gurry on Breach of Confidence: The Protection of Confidential Information (Oxford: OUP, 2012) and co-director (with Martin Kretschmer), AHRC Resources Enhancement Project, Primary Sources on Copyright: (). Andrew P. Bridges, a partner in Fenwick & West LLP, is based in San Francisco and Silicon Valley. He represents innovators and their companies around the globe in a variety of important matters typically involving new technologies or business models, often when a company’s or an entire industry’s future is at stake. He litigates complex cases in internet, intellectual property, advertising, unfair competition, consumer protection, and commercial law. He also advises entrepreneurs and companies as they develop new products, technologies, or business models in the face of potential legal challenges. Andrew Bridges received AB with distinction in Greek and Latin, Stanford University; BA in Literae Humaniores and MA, Oxford University (Merton College); and JD, cum laude, Harvard Law School. Brandon Butler is the Director of Public Policy Initiatives at the Association of Research Libraries (ARL), a group whose members are 126 academic and research libraries in North America. His responsibilities there include analysis and intervention regarding copyright, privacy and surveillance, and telecommunications. He is currently working on a project to develop a code of best practices in fair use for academic and research libraries. Brandon also writes the ARL Policy Notes blog, , and the @ARLpolicy twitter account. Brandon Butler graduated from the University of Virginia School of Law in 2008. Anna Carboni is a partner of Redd Solicitors LLP. She is qualified as both a solicitor and a barrister and has over 20 years’ experience in the field of IP, with a particular focus on trademarks, designs, and copyright. She sits as an ‘Appointed Person,’ hearing appeals from the UK Trade Marks Registry. Anna was a partner of an international law firm and head of its London IP Group before being called to the Bar in 2003. She spent the next seven years as a barrister at Wilberforce Chambers before returning to practice as a solicitor in October, 2010. Duncan Curley is a solicitor and the director of Innovate Legal, a London-based boutique IP law practice that he founded in 2007. Dr Curley acts mainly for companies operating in the generic pharmaceutical sector. His work encompasses patent clearance and litigation, with a focus on achieving first-to-market generic drug product launches for his clients in the xiv

List of Contributors EU. Dr Curley’s previous publications include the book Intellectual Property Licences and Technology Transfer (on the European Technology Transfer Block Exemption) and ‘Extending Rewards for Innovative Drug Development’, a short report on Supplementary Protection Certificates published in December 2007 by the Intellectual Property Institute. Dr Dev S. Gangjee is a senior lecturer in law at the LSE, with teaching and research interests in intellectual property as well as more broadly in private law. Dev is a Research Fellow of the Oxford IP Research Centre and a Research Affiliate at IP Osgoode. He has recently completed a monograph on the history of international Geographical Indications protection— Relocating the Law of Geographical Indications—while also co-editing a research handbook on this topic. Additional interests include European and comparative trademark law, the history and theory of IP, collective innovation, and traditional knowledge protection. Sheldon W. Halpern holds the Hon. Harold R. Tyler, Jr., Chair in Law and Technology at Albany Law School; he had previously been at the Moritz College of Law of The Ohio State University, where he was the C. William O’Neill Professor of Law and Judicial Administration. In addition to being the lead author (with Port and Nard) of the United States volume of Kluwer’s International Encyclopaedia of Intellectual Property Law, he has published several books and articles in the fields of copyright law, trademark law, and the law of defamation and privacy and publicity rights; he has lectured and given seminars in these areas at the University of Edinburgh and at Queen Mary University (London). He has directed a series of interdisciplinary conferences exploring the impact of technology on intellectual propery law. Before joining academia, Professor Halpern practised law as a partner in law firms in New York and Minnesota and as general counsel of two large, publicly held corporations. Professor Halpern is a 1959 Order of the Coif graduate of the Cornell Law School. Dr Robert Harrison studied physics at Oxford and Sheffield Universities. After completing his qualifications as a German and European Patent Attorney with IBM Germany, he joined W.L.Gore & Associates, Germany, as European IP Counsel. He is now a partner with the 24IP Law Group, Munich, Berlin, Paris, and London. Rob’s practice involves developing intellectual property protection strategies, particularly in connection with merger and acquisition activities. Rob is a former co-chair of the Licensing Executives Society International’s Electronics, IT and Telecommunications Committee and is recognized by the IAM Magazine as one of the world’s leading IP strategists. Belinda Isaac is founder and principal of Isaac & Co Solicitors, a specialist IP firm based in Oxford. She has over 20 years’ experience of working with household global brands and sophisticated technology businesses across a broad range of industry sectors advising on the international protection, exploitation, and enforcement of IP rights. Belinda is a qualified solicitor and has a doctorate in Intellectual Property from Kings College, London. The author of Brand Protection Matters (Sweet & Maxwell 2001) Belinda has written widely on the subject of trademarks and branding and has co-authored several books. She has a particular interest in the protection and enforcement of rights in branded consumer products and the exploitation of rights in high technology businesses. Mark D. Janis teaches intellectual property, trademarks, and patent law courses at the Indiana University Maurer School of Law in Bloomington, Indiana, where he is Robert A. Lucas Chair in Law and the Director of the Center for Intellectual Property Research. xv

List of Contributors Professor Janis has authored a number of books, including the treatise IP and Antitrust (with Hovenkamp, Lemley, and Leslie), casebooks on trademarks and unfair competition law and trade dress and design law (both with Dinwoodie), and other books on trademark law (with Dinwoodie). He has published numerous law review articles and book chapters on patent law, intellectual property and antitrust, trademark law, and intellectual property protection for plants and plant biotechnology. Professor Janis is the winner of a Collegiate Teaching Award and a Faculty Scholar Award (both from the University of Iowa College of Law), and INTA’s Ladas Award in 2008. Prior to joining the faculty at Indiana, he was the H. Blair & Joan V. White Intellectual Property Chair at the University of Iowa College of Law. He practised patent law at Barnes & Thornburgh (Indianapolis) from 1989 to 1995. David Llewelyn is Professor of Intellectual Property Law at King’s College London and Professor (Practice) in the School of Law, Singapore Management University. A solicitor, he is Of Counsel at White & Case (based in its Singapore office) and is External Director and Deputy Chairman of the IP Academy Singapore. David is joint author of the leading practitioners’ work Kerly’s Law of Trade Marks & Trade Names (15th edn, 2011) and the textbook Cornish, Llewelyn & Aplin on Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (7th edn, 2010). His business book Invisible Gold in Asia: Creating Wealth through Intellectual Property was published in 2010, and is updated on its Facebook page Invisible Gold in Asia. Craig S. Mende is a partner at Fross Zelnick Lehrman & Zissu, PC, which has the largest US practice devoted exclusively to protection of trademark, copyright, unfair competition, domain name, and design rights. Mr Mende is co-chair of the New York chapter of the Copyright Society of the USA, heads his firm’s anti-counterfeit group, and represents a broad array of clients in copyright, trademark, and new media matters. He is a magna cum laude graduate of New York University School of Law, graduated with Honours in Philosophy from Haverford College, and clerked for the Honorable Judge Alan E. Norris on the US Court of Appeals for the Sixth Circuit. He previously practised in the Litigation Department of Cravath, Swaine & Moore and the Business and Legal Affairs Department of Arista Records in New York. David Musker is a UK and European patent attorney and trademark and design attorney, with litigation rights in the High Court. He is a partner at R G C Jenkins & Co, specializing in patents and designs, and Visiting Professorial Fellow at Queen Mary and Westfield College, London University. David was the founder of the Class 99 design law blog, an editor and contributor to the CIPA/ITMA Community Design Handbook, chair of the CIPA Designs and Copyright Committee and member of the Editorial Boards of JIPLP and ECDR. In 1993, he filed the first Community Design. Alan S. Nemes is a partner in the US law firm Husch Blackwell LLP. He has 25 years’ experience representing domestic and international clients regarding trademark, trade dress, design, copyright, domain name, and advertising issues. Alan has also practised extensively in the area of non-traditional IP rights. He represents clients before the US Trademark Trial and Appeal Board and federal courts. He previously served as IP counsel to Edison Brothers Stores, Inc, a retail fashion conglomerate, and later as managing partner of the IP firm, Kalish & Gilster. Axel Nordemann is a German lawyer working with the IP boutique firm of Boehmert & Boehmert. He joined the firm in 1993 and has been a partner in the Berlin office since 1996. xvi

List of Contributors The focus of his work is on trademark law, copyright law, and unfair competition law. He is the co-editor and co-author of several books on intellectual property law, including Nordemann: Competition Law—Trade Mark Law (11th edn, 2012), Fromm/Nordemann: Commentary on the German Copyright Act (10th edn, 2008), and Götting/Nordemann: Commentary on the German Act against Unfair Competition (1st edn, 2009). Axel Nordemann is Dr iur and honorary professor at the University of Konstanz where he teaches copyright law. Mark V.B. Partridge is the founder of Partridge IP Law, a Chicago-based firm with a global practice helping businesses protect brands, content, and ideas. A graduate of Harvard Law School, Mark has extensive experience with trademark and internet issues. In 1998, he was selected to serve as an expert on the WIPO Internet Domain Name Process. As a UDRP Panelist, he has issued over 175 decisions. He has served on ICANN committees to help develop rights protection mechanisms for new gTLDs. Mark’s books include Trademark and Copyright Litigation (2010) and Alternative Dispute Resolution (2009) published by Oxford University Press. Sam Ricketson is a Professor of Law at the University of Melbourne and also practises at the Victorian Bar in the area of intellectual property (copyright, patents, trademarks, and designs). Prior to November 2000, he was the Sir Keith Aickin Professor of Commercial Law at Monash University, and before this held various positions at the Universities of Melbourne and London. He has written and published widely in the area of intellectual property, and has been the Director of Studies in Intellectual Property in the Melbourne Law Masters programme since 2001. Dr Mira T. Sundara Rajan holds a doctorate from the University of Oxford, and is a scholar and specialist consultant on intellectual property rights. She is currently an Honorary Member of Magdalen College, Oxford University, and her former academic appointments include the Canada Research Chair in Intellectual Property Law at the University of British Columbia, (2004–11; Canada Research Chair Award 2005–15) and a Herchel Smith Fellowship in Intellectual Property Law at the Queen Mary Intellectual Property Research Institute of the University of London (2002–4). Mira’s most recent book, Moral Rights: Principles, Practice and New Technology (New York: Oxford University Press, 2011) examines the aspect of copyright law known as moral rights, and offers a unique analysis of their role in a technological environment. Professor Uma Suthersanen currently holds a chair in international intellectual property law at the Centre for Commercial Law Studies, Queen Mary, University of London. She has degrees from the National University of Singapore, and Queen Mary, London, and is a member of the Singapore Bar. Her other posts include: Queen Mary Studies in Intellectual Property (series editor); European Copyright and Design Reports (editor); British Literary and Artistic Copyright Association/ALAI-UK (vice-chairman); Association Litteraire et Artistique Internationale (ALAI) (executive committee); British Copyright Council (copyright working group); British Computer Society (legal advisory committee); Intellectual Property Academy of Singapore (Visiting Overseas Fellow). She has received consultancies from: United Nations Conference on Trade and Development; World Intellectual Property Organization; European Parliament; Government of Israel; Government of Singapore/ Singapore Intellectual Property Academy; International Centre for Trade and Sustainable Development. xvii

List of Contributors Marleen H.J. van den Horst holds a doctorate from VU University Amsterdam. She is partner and head of the IP & Technology Practice Group of the Netherlands based law firm BarentsKrans NV. She has extensive experience in litigating IP cases before various courts, both interim injunction and final relief proceedings. With a focus on patents and technology, she is frequently involved in multi-jurisdictional litigation. Client-driven, Marleen has specialized in patent litigation and regulatory proceedings in the pharmaceutical, life sciences, and healthcare industry. She is a regular speaker at international conferences, such as Fordham’s IP conference, C5 conferences, LES. She is a member of the Standing IP Committee of the Dutch Bar Association. Marleen is recognized as a leader in the field in Chambers Global, Chambers Europe, Europe Legal 500, and IAM Patent Litigation. Ashwin van Rooijen is an associate in the Brussels-based antitrust practice of Clifford Chance LLP. Having previously worked as a software engineer, Mr Van Rooijen specializes in advising technology firms in mergers and behavioural antitrust matters as well as a variety of intellectual property issues. He holds a PhD from the University of Amsterdam’s Institute for Information Law on the interplay between software copyright and competition law, an LLM from the University of California Berkeley, and an LLB/LLM from the Free University of Amsterdam. Thomas C. Vinje is a partner at Clifford Chance LLP in Brussels and chairman of the firm’s global antitrust practice. He specializes in European Union antitrust and intellectual property law, especially in high-technology matters. He has been particularly active on dominance and intellectual property matters as well as mergers in the IT sector, and is a regular speaker on related topics. Recently, he advised Oracle on its acquisition of Sun Microsystems. Mr Vinje holds a JD from Columbia University School of Law (James Kent Scholar) and a BA, summa cum laude, from the University of Washington. Mr Vinje is a solicitor in England and Wales and an attorney in Hawaii and California.

Contributors to the Comparison Tables Uğur Aktekin is an attorney-at-law and trademark and patent attorney specializing in intellectual property law. He co-chairs the IP department of his firm and his practice concentrates on trademark, design, copyright, information technology, unfair competition, advertising, and media laws. He has been involved in a number of advisory and litigation matters on all fields of IP law. He is a member of the Board of Directors of the Turkish Association of Patent and Trademark Attorneys and the committees of several international IP organizations. His email address is . Sean Alexander is a patent agent in the Vancouver office of Gowling Lafleur Henderson practising primarily in the biopharmaceutical, medical device, and greentech sectors. In addition to being a registered patent agent in Canada and the United States, Sean is a qualified European Patent Attorney. Sean has been working in the intellectual property area since 1996 and joined Gowlings in 2009. Roberto Arochi is a partner at Arochi, Marroquín & Lindner, SC. Roberto has over 30 years’ of experience in intellectual property law and he is recognized as one of the top IP law practitioners in Mexico. He focuses on trademarks, patents, copyrights, IP litigation, IP enforcement, border measures, domain names, advertising law, and licensing. xviii

List of Contributors He is an active member of the International Trademark Association (INTA), the Mexican Association for the Protection of Intellectual Property, the Mexican Bar Association, the Inter-American Association of Intellectual Property, the International AntiCounterfeiting Coalition and the Global Advertising Lawyers Alliance, among others. Roberto graduated from the Universidad Iberoamericana and is in the process of obtaining his JD from the Universidad Panamericana. Ravi Bhola is a patent attorney and is the partner heading the practice of the Bangalore office of K&S Partners. He handles filing and prosecution of patent applications in diverse areas of technology including biotechnology, bioinformatics, software, nanotechnology, pharmaceuticals, electronics, communication, and mechanical technology. He also advises clients on issues relating to licensing, assignment, oppositions, freedom to operate, technology landscaping, IP due diligence and auditing, IP portfolio strategy, patent pooling, negotiations, and litigation. Ravi Bhola regularly conducts patent workshops and invention capturing sessions for his clients. Christopher Blizzard is a Santa Clara University law student who spent a summer as an externship at Yuasa and Hara in Tokyo, Japan, and contributed to the comparison table of Japan as a member of the Yuasa and Hara team. Katherine Chandler is an intellectual property lawyer who advises on copyright and trademarks as well as trade practice issues dealing with misleading and deceptive conduct. She also undertakes substantial work in relation to anti-counterfeiting and brand protection. Katherine’s practice encompasses clients in a variety of industries including luxury goods, food and beverage, automotive, transportation, and pharmaceutical. Bertrand Cochet received his engineering degree in Telecommunications in 1997 and obtained a postgraduate degree in Intellectual Property from Strasbourg University in 2002. After having worked at the European Patent Office as a Patent Examiner, he joined Cabinet Plasseraud in 2008 where he worked as a European and French Patent Attorney. He now works as an in-house patent counsel with France Telecom. Hoo Dong Lee is the managing partner of the Intellectual Property Group at Bae, Kim & Lee LLC (BKL), which is the top tier full-service law firm in Korea. He is also a member of the Korea Copyright Commission and serves as a key member in many committees dealing with IP issues and developments. Furthermore, he has previously studied and worked in Japan for many years and is a well-renowned specialist of Japanese practice in Korea. Marina I. Drel is a partner and the head of the litigation and enforcement practice in Gowlings’ Moscow office. Marina’s broad practice and legal experience include advice to, and legal representation of, multinational corporations in courts of general jurisdiction, arbitration courts, and administrative proceedings in all areas of intellectual property and advertising. A qualified Russian barrister and solicitor, Marina has particular experience in infringement and counterfeit issues. Valérie Dureisseix handles drafting, prosecution, and performs freedom-to-operate studies at Cabinet Plasseraud. After Materials Sciences Engineering school, Valérie received a PhD earned between the Sciences and Separation Methods laboratory (EA3233, University of Rouen) and Cephalon France: a pharmaceutical company where she worked on solid state characterization of active pharmaceutical ingredients and their derivatives. Valérie joined the chemistry department of Cabinet Plasseraud in January 2010. xix

List of Contributors Robert A. Fashler is a lawyer and trademark agent in the Vancouver Office of Gowlings. He has specialized in intellectual property and technology for 25 years. Best Lawyers in Canada and Lexpert recognize Rob as one of Canada’s leading practitioners in IP and technology. He has also been listed in IAM Licensing 250 for 2011 (Intellectual Asset Management Magazine). Rob is an arbitrator and mediator associated with the World Intellectual Property Organization, International Trademark Association, National Arbitration Forum, and IP Neutrals of Canada, and is a Fellow of the Chartered Institute of Arbitrators. Taku Fujiwara is attorney-at-law at Yuasa and Hara in Tokyo, Japan. He studied at Chuo University, LLB, 2006; Hitotsubashi University, JD, 2008. Frédéric Glaize is a European trademark and design attorney, working at Cabinet Plasseraud. He assists clients on trademark, designs, domain names and software copyright legal protection, and enforcement. Among his editorial activities, Frédéric is the main contributor of , a blog on trademark law and its unusual aspects. He also contributes to Marques’ Class 46 blog. Deepak Gogia is an associate in the trademarks and copyright practice of K&S Partners in the firm’s Gurgaon office. He advises clients on all aspects of enforcement of trademarks, copyrights, and designs. He regularly appears before the High Court of Delhi, the Supreme Court of India as well as the Trade Marks Office and the Intellectual Property Appellate Board in connection with enforcement matters. He also regularly handles transactional work involving issues of copyright and entertainment law for clients from the movie and publication industry. Stephen Goldberg is head of trademarks and a partner at Spoor & Fisher, South Africa, a specialist IP firm established in 1920. Since then it has developed into a firm of over 50 lawyers and IP specialists providing solutions across the full spectrum of intellectual property. Stephen is a trademark attorney with 28 years’ experience specializing in domestic and international trademark registration, searches, and domain names. Stephen is also former lecturer and examiner on trademarks for the South African Institute of Intellectual Property Law, and former INTA Bulletin editor for Law and Practice, Middle East and Africa. Tim Golder has more than 27 years’ experience in intellectual property law. He has been a partner at Allens Arthur Robinson (based in the Melbourne office) since 1991, and before that worked as an associate of that firm and also at Slaughter and May in London. Tim works in both contentious and non-contentious matters, and also handles trademark portfolios for clients. Tim is both a lawyer and a registered trademarks attorney. He is a member of the Law Institute of Victoria, The International Trade Mark Association, the Intellectual Property Society of Australia and New Zealand, The Copyright Society of Australia, the Editorial Board (Trade Marks and Unfair Competition) of the Journal of Intellectual Property Law & Practice, the Victorian Society of Computers and the Law, Australian and New Zealand Sports Law Association, and the Franchise Council of Australia. He is also a consultant to the Trade Marks Sub-Committee of the Law Council of Australia. His email address is . Sara Holder is based in the United Arab Emirates; she heads up Rouse & Co International’s practice in the MENA region and has been regularly recognized as a leading practitioner. After qualifying and working as a lawyer in New Zealand, Sara gained extensive experience

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List of Contributors of intellectual property in China and Indonesia, before relocating to the Middle East. Sara also spent several years managing Rouse’s practice in Indonesia. Tim Iserief joined IP firm Klos Morel Vos & Schaap as a professional support lawyer in 2011. Tim is currently finishing his masters degree in intellectual property law at the University of Amsterdam, and is writing a thesis on the principle of relativity with regard to unfair competition matters in the Netherlands. Takeshi Kanda is an attorney-at-law of Yuasa and Hara in Tokyo, Japan, and specializes in all fields of intellectual property law including licensing and litigation, as well as IT, general corporate law, and transactions. He studied at Keio University, gaining an LLB in 2003, graduated from the Legal Training and Research Institute in 2006, and achieved an LLM at the University of Southern California, Gould School of Law in 2011. He also experienced working at the Japan Patent Office as a fixed-term official and whilst there was involved in the preparation for the Japanese Patent Act reform established in 2011. He has written several articles on intellectual property in Japanese and English for various books and magazines. Rajendra Kumar is a partner in the Gurgaon office of K&S Partners and heads the firm’s trademarks, copyright, and geographical indications litigation practice. His area of expertise extends to trademark and copyright litigation, all aspects of prosecution and enforcement of intellectual property rights, TRIPS-related issues, domain name disputes, and intellectual property aspects of the entertainment industry and the internet. He has assisted the Government of India in developing a new law for the protection of geographical indications in India. The author of several articles, Rajendra is also a prominent speaker at various fora, both national and international. FJ Labuschagne LLB (Northwest) LLM (Corporate) (Pretoria). Attorney of the High Court of South Africa, Associate Member of the South African Institute of Intellectual Property Law, Member of SAIIPL Design Law Committee. FJ specializes in the filing and prosecution of local patent and design applications as well as patent and design records and formalities at Spoor & Fisher in South Africa. He also focuses on regulatory advice as a member of the firm’s medicine, foodstuff, and product regulatory team. He has extensive transactional, commercial litigation and intellectual property enforcement experience. He can be reached at . Gilbert Leong is a partner in Rodyk & Davidson LLP’s Intellectual Property and Technology Practice Group. Gilbert speaks and writes widely in the field of data privacy/ protection matters. As a member of the legal sub-committee of the National Internet Advisory Committee, Gilbert participated in the drafting of the ‘Model Data Protection Code for the Private Sector’. Gilbert is acknowledged in ‘Who’s Who Legal: Singapore 2008’ for regulatory compliance, in the Asian Legal Business ‘Legal Who’s Who Singapore 2003’ for information technology, and is an Asialaw Leading Lawyer 2010 and 2011 for IT, telecommunications, and media. He was a member of several technology-focused think tanks in Singapore. In Gi Min is a senior associate of the IP Group at BKL. He is a member of the Korea Entertainment Law Society and his specialty is in the area of trademark, game, and entertainment law.

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List of Contributors Manuel Morante is an associate at Arochi, Marroquín & Lindner SC (Mexico City) and mainly practises intellectual property law, international law, administrative law, and advertising law. He is an active member of the Mexican Association for the Protection of Intellectual Property and of the International Trademark Association (INTA). Manuel Morante has a law degree (1997) and JD from the Universidad Panamericana (UP). He is a Philosophical Anthropology graduate from the Philosophy Faculty of the UP (2002). Mr Morante teaches comparative law at the law faculty of Universidad Panamericana (Mexico City). Matthew Murphy is the managing partner of the MMLC Group and the head of its IP/IT Group for China. Matthew has a Master of Laws specializing in Chinese commercial law and IP law, and is well known for his 17 years of work in protecting the IP rights of major corporations and start-ups in China. Matthew has been listed as a leading lawyer in the Asia Pacific region by numerous publications, including Chambers & Partners, Lawyer Monthly, and others. He is also a popular gTLD and ccTLD domain name arbitrator with CIETAC and the HKIAC. In 2011, the MMLC Group was awarded China IP Law Firm of the Year by Lawyer Monthly, and China IT Law Firm of the Year by Corporate International. Latha R. Nair is a partner in the Gurgaon office of K&S Partners. She advises clients on all aspects of prosecution and enforcement of trademarks, geographical indications and copyrights, transactional and advisory work related to trademark and copyright protection on the internet and the entertainment industry, issues related to TRIPS Agreement, and the protection of geographical indications in India and abroad. Latha also has expertise in domain name disputes, trademark and copyright due diligence, and opinions on the exploitation of trademarks, copyrights, and geographical indications. She has authored several articles and regularly speaks at national and international fora. Shamin Raghunandan has practised trademarks at Spoor & Fisher for seven years. Her field of practice is domestic and international trademark registrations, searches, and portfolio management. She is the author of the chapter entitled ‘Singapore Treaty on the Laws of Trademarks’, published in the World Intellectual Property Rights and Remedies. She also contributes to the update of Katzarov’s Manual on Industrial Property and Kluwer Law International’s Brown Book. Shamin’s email address is . Gilles Ringeisen graduated from Strasbourg University in 1997 and subsequently obtained a postgraduate degree in intellectual property from the same university in 1998. He became a qualified French and Community trademarks and designs attorney in 2003. Gilles is a member of APRAM (Association des Praticiens du Droit des Marques et des Modèles) and ECTA (European Community Trademark Association). He joined Cabinet Plasseraud in 2000 and has been working there ever since. He specializes in trademarks and designs infringement matters, including specific issues of tobacco regulation. Gilles also focuses on intellectual property litigation. Dmitry S. Semenov is an associate in Gowlings’ Moscow office, practising in all areas of intellectual property, primarily trademark law, patents, copyright, domain name enforcement, and anti-counterfeiting. Dmitry has extensive experience in assisting multinational corporations in intellectual property rights matters, including successful anti-counterfeit activities and litigation. He has additional expertise in advertising, packaging and labelling, marketing, unfair competition, privacy and data protection, trade secrets, IP-related transactions, as well as in regulatory issues relating to the pharmaceutical industry. xxii

List of Contributors Madhusudan Siddara Thippappa is a patent attorney and works as a senior associate at K&S Partners’ Bangalore office. He represents clients in the areas of computer science, computer networks, embedded systems, computer applications and software, electronics and communications, electro-mechanical engineering, automotive engineering, and telecommunications. He is involved in patent drafting, prosecution, opinions on patentability, freedom to operate, invalidation search, due diligence, technology landscape, infringement analysis, IP portfolio building strategy, oppositions and managing patent portfolios of clients, and conducting patent workshops. Madhusudan regularly appears before the Patent Office for prosecutions, oppositions, hearings, and appeals. He regularly speaks at IP workshops. Benny Spiewak is a senior partner with ZCBS-Zancaner Costa, Bastos e Spiewak Advogados, based in São Paulo, Brazil. His practice is dedicated to legal, regulatory, and legislative policy challenges of clients engaged in the creative and innovative industries, mainly copyrightintensive markets, life sciences, and IP-driven commercial transactions. He is coordinator of the International Law Committee at the Brazilian Intellectual Property Association and officer of the Intellectual Property Association of the State of São Paulo. Benny is a member of the Intellectual Property and Health Law task forces of the Brazilian chapter of the American Chamber of Commerce, the American Intellectual Property Law Association, DIA-the Drug Information Association, and the Food and Drug Law Institute. He is assisting professor of intellectual property at the Continuing Education School of the Brazilian Bar Association, São Paulo section and visiting lecturer of intellectual property and global challenges at WIPO’s summer school, in Geneva and in São Paulo. Catherine Touati is a senior attorney in the chemistry/biotech department at Cabinet Plasseraud. She specializes in the chemical, cosmetic, food, and in particular the phytopharmaceutical, and pharmaceutical fields. She also advises on questions relating to Supplementary Protection Certificates. Catherine handles drafting, prosecution and defence of rights, as well as patent litigation matters, and also performs freedom-to-operate studies. Moïra Truijens graduated from the University of Utrecht where she specialized in intellectual property law and IT law. Moïra worked at the District Court of Utrecht as well as at the Institute for Information Law of the University of Amsterdam, and started her career as a lawyer at IP law firm Brinkhof, before she joined Klos Morel Vos & Schaap in 2008. She specializes in patent, copyright, trademark, and advertising issues. Moïra is one of the co-authors of the AIPPI reports on ‘Damages for infringement, counterfeiting and piracy of trademarks’ and ‘The person skilled in the art and the inventive step requirement in patent law’. She teaches and lectures frequently on subjects related to her practice. Josine van den Berg was educated at the University of Nijmegen where she majored in intellectual property law. In 2003, Josine joined IP firm Klos Morel Vos & Schaap. She spent a year at the District Court Haarlem as a trainee judge in 2007, returning to the firm in 2008. Her extensive litigation experience includes a considerable number of high profile trademark, copyright as well as tradename cases. Furthermore, her practice has a focus on press and media related matters. Josine teaches regularly on a wide range of intellectual property litigation related topics, including cost awards and ex-parte injunctions. Kai Westerwelle is a certified specialist lawyer in information technology law and advises major national and international companies on IT and intellectual property law. Dr Westerwelle has supported a substantial amount of national and international restructuring xxiii

List of Contributors and outsourcing projects, M&A transactions, and IPOs. He is the author of various publications and lectures at the University of Dresden (data protection) and the Frankfurt School of Business and Finance (IP law). Dr Westerwelle is chairman/member of the board of directors of different technology companies. Kozo Yabe is attorney-at-law/patent attorney and a partner of Yuasa and Hara in Tokyo, Japan; Chuo University, LLB, 1985; University of Illinois at Urbana-Champaign, LLM, 1994; Adjunct Professor, University of Illinois College of Law since 2000 and Chuo University Law School from 2005 to 2009; Board members of AIPPI Japan, ALAI Japan, and Japan Trademark Association. Takashi Yamada is attorney-at-law of Yuasa and Hara, Tokyo, Japan. He practises in intellectual property, corporate, information and communications technologies, international transactions, and litigation. He studied at University of Tokyo, LLB, 1993; Queen’s University (Canada), LLM, 1997, Legal Training and Research Institute in 2008. He has worked for the Ministry of Internal Affairs and Communications, Organisation for Economic Cooperation and Development (Paris), and was Counsellor, Legislative Bureau of the House of Representatives. He is a visiting lecturer at Keio University Graduate School of Media Design.

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TABLE OF CASES Note: Chapters 1–17 are referenced to paragraph number and the Comparison Tables are referenced to page number.

T 83/98 and T 1077/99 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 335/90 (unpublished) (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 442/90 (unpublished), HETTLING-DENKER/Translucent Building Materials (T686/90), [2004] EPOR 5 T 252/91 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 1179/08 (unpublished) (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2.43 2.66 2.67 2.43

A&M Records, Inc v Napster, Inc 239 F 3d 1004, 1023 (9th Cir 2001) . . . . . . . . . . . . . . . . . . . . . 1.70 A.A. Sharnoa Ltd v Seren Meuhadot Industries Ltd N. Tnuva, Court decision 22(1)113 . . . . . . . 2.104 AB Volvo v Erik Veng (UK) Ltd (C-238/87) [1988] ECR 6211 (ECJ 5 October 1988) . . . . . . . .17.34, 17.37, 17.38, 17.41, 17.44, 17.45, 17.48, 17.56, 17.60 Abdul-Jabbar v General Motors Corp, 85 F 3d 407 (9th Cir 1996) . . . . . . . . . . . . . . . . . . 15.15, 15.37 Abercrombie & Fitch Stores, Inc v American Eagle Outfitters, Inc, 280 F 3d 619 (6th Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.06, 12.34, 12.35 Abschlussstück, BGH, GRUR (2003), 332 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 Acuson Corpn v Aloka Co Ltd, 209 Cal App 3d 425, 257 Cal Rptr 368, 10 USPQ 2d 1814 (CA Cal) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.44 Adelman v Christy, 2000 US Dist LEXIS 4516 (Az, 29 March 2000) . . . . . . . . . . . . . . . . . . . . . . 9.44 Afga-Gevaert AG’s Application (1982) RPC 441 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.38, 2.39, 2.42 AIDA v AIDU, BGH, GRUR (2010), 235 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12 Alberto-Culver Co v Andrea Dumon, Inc, 466 F 2d 705, 175 USPQ 2d (7th Cir 1972) . . . . . . . 12.10 Alfred E. Tiefenbacher GmbH v H. Lundbeck A/S JGR 2009/27, Decision of the District Court of The Hague of 8 April 2009 . . . . . . . . . . . . . . . . . . . . . . . . . 6.54 Allison v Vintage Sports Plaques, 136 F 3d 1443 (11th Cir 1998) . . . . . . . . . . . . . . . . . . . 15.50, 15.52 Aluminiumräder, BGH, GRUR (2005), 163 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 Amarula und Marulaba, Higher Regional Court of Cologne, MarkenR (2009), 228 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.29, 16.35, 16.36 American Cyanamid (Dann’s) Patent [1970] 1 WLR 1507, [1970] 3 All ER 785, [1970] FSR 443, [1971] RPC 425 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.23 American Dental Ass’n v Delta Dental Plans Ass’n, 126 F 3d 977 (7th Cir 1997) . . . . . . . . . . . . . . 9.43 American Greetings Corp v Dan-Dee Import, Inc, 807 F2d 1136 (3d Cir 1986) . . . . . . . . . . . . . . 7.87 American Online v National Health Care Discount, Inc, 174 F Supp 2d 890 (ND Iowa 2001) . . . 9.60 American Waltham Watch Co v United States Watch Co 173 Mass 85, 53 NE 141 (1899) . . . . . 13.09 Amp Incorporated v Utilux Proprietary Limited [1972] RPC 103 (HL) . . . . . . . . 2.106, 2.109, 2.110, 2.113, 2.117, 2.118, 2.123, 2.127, 2.129, 2.131, 8.17 Anchor Wall Systems Inc v Keystone Retaining Wall Systems Inc [1996] APO 33 . . . . . . . . . . . . . 2.39 Angell Elevator Lock Co v Manning (1965) 348 Mass. 623, 626, 205 NE 2d 245 . . . . . . . . . . . . . 3.43 Anheuser-Busch v Budejovicky Budvar, NárodnÍ Podnik (C-245/02) [2004] ECR I-0000, [2005] ETMR 27 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11 Animal Fair, Inc v Amfesco Indus, Inc, 620 F Supp 175 (D Minn. 1985), affirmed 794 F 2d 678 (8th Cir 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.72 Animated Music Ltd’s Trade Mark [2004] ECDR 27. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Animated Music Ltd’s Trade Mark [2004] ETMR 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.47 Ann-Margret v High Society Magazine, Inc, 498 F Supp 401, 404 (SDNY 1980) . . . . . . . . . . . . 15.56 Apotex USA, Inc, v Merck & Co, Inc 254 F 3d 1031, 59 USPQ 2d 1139 (CAFC, 2001). . . . . . . . 3.34 Apple Computer, Inc v Franklin Computer Corp, 714 F 2d 1240 (3rd Cir 1983) . . . . . . . . . . . . . 1.29 Apple/Method of transition between window states (T 50/07), [2010] EPOR 20 (TBA) . . . . . . . . 2.67

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Table of Cases ARENHOLD/Deposit of an Industrial Design J 15/80 (1981) OJ EPO 213, [1979–85] EPOR A56, [1982] ECC 74 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.40 Arista Records LLC v Lime Group LLC, case No 06 CV 5936 (KMW), slip op. at 6 (SDNY 10 March 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 Arsenal Football Club plc v Reed (C-206/01) [2002] ECR I-10273, [2003] ETMR 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.23, 7.45, 7.46 Asahi Kasei Kogyo KK’s Application [1991] RPC 485 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . 3.62, 3.63 Ashley Furniture Industries, Inc v Sanciacomo NA, Ltd, 187 F 3d 363 (4th Cir 1999) . . . . . . . . . 16.17 Aslanian, Re 590 F 2d 911, 200 USPQ 500 (CCPA 1979), 2125 . . . . . . . . . . . . . . . . . . . . . . . . . 2.45 Aspen Skiing Company v Aspen Highlands Skiing Corporation, 472 US 585, (US Sup Ct, 19 June 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.31, 17.68 Associated Press v All Headline News Corp 608 F Supp 2d 454 (SDNY 2009) . . . . . . . . . . . . . . . 9.57 AstraZeneca v Commission, not yet published (Case T-321/05) (EU General Court 1 July 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.76 Attorney-General v Blake [2001] AC 263 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25 Attorney-General v Guardian (No 2) (Spycatcher Case) [1990] 1 AC 109 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12, 3.13, 3.47, 3.51 Augsburger Puppenkiste, BGH, GRUR (2009), 772 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12 August Storck v OHIM (C-24/05 P) [2006] ECR I-5677 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.79 Au-Tomotive Gold, Inc v Volkswagen of Am, Inc, 457 F3d 1062 (9th Cir 2006) . . . . . . . . . . . . . . 7.87 Avia Group International Inc v L. A. Gear California Inc, 853 F 2d 1557, 7 USPQ 2d 1548 (Fed Cir 1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108, 2.125, 2.127, 12.36 Bailey v Hughes [2006] EWPCC 5, [2007] FSR 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.135 Baker v Selden 101 US 99 (1879) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.12, 1.13, 1.14 Bang & Olufsen A/S v OHIM [2008] ETMR 46 (Case T-460/05) . . . . . . . . . . . . . . . . . . 12.77, 12.80 Bang & Olufsen A/S’s application to register the shape of a loudspeaker (Case R 497/2005-1), 10 September 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.80 Barcelona.com, Inc v Excelentisimo Ayuntamiento de Barcelona, 330 F 3d 617 (4th Cir 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.81 Barclays Capital v Theflyonthewall.com 650 F 3d 876 (2nd Cir 2011) . . . . . . . . . . . . . . . . . . . . . 9.58 Bauhausklassiker v Möbel im Bauhausstil, Regional Court of Hamburg, Judgment of 12 February 2008, 312 O 525/07, GRUR-RR 2009, 76 (LS) . . . . . . . . . . . . . 16.25 Bavaria NV, Bavaria Italia Srl v Bayerischer Brauerbund eV (C-343/07) [2009] ECR I-5491, [2009] ETMR 61 (ECJ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.25 Bayer AG v Schein Pharmaceuticals, Inc, 301 F 3d 1306, 64 USPQ 2d 1001 (CAFC, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.80 Bayer/Plasterboard (Opposition by Rigips and Wacker-Chemie) (T602/91) [1996] EPOR 388 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.69 Bayer’s Design (1908) 25 RPC 56 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.134 Bayerischer Brauerbund eV v Bavaria NV (C-120/08) [2011] ETMR 11. . . . . . . . . . . . . . . . . . . 13.17 Benedict v General Motors 184 F Supp 2d 1197 (ND Fla 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . 3.34 Benetton Group SPA v G-Star International BV (C371/06) [2008] ETMR 5 . . . . . . . . . . . . . . . . 7.57 Benson v Paul Winley Record Sales Corp, 452 F Supp 516, 517 (SDNY 1978) . . . . . . . . . . . . . . . 7.75 Berkeley Administration v McClelland [1990] FSR 505 (EWHC QB) . . . . . . . . . . . . . . . . . . . . . 3.24 Berkla v Corel, 66 F Supp. 2d 1129 (ED Ca 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Bernstein v United States Dep’t of Justice, 176 F 3d 1132 (9th Cir 1997). . . . . . . . . . . . . . . . . . . . 1.30 Berry Sterling v Pescor Plastics 122 F 3d 1452, 1455 (Fed Cir 1997) . . . . . . . . . . . . . . . . . . . . . . 2.115 Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996) . . . . . . . . . 2.56, 2.76, 2.103, 2.104, 2.108, 2.110, 2.118, 2.132 Bezpečnostní softwarová asociace—Svaz softwarové ochrany (C-393/09) [2011] ECDR 3 . . . . . . 1.34 Bilski v Kappos (2010) 130 SCt 3218 (US Sup Ct 2010). . . . . . . . . . . . . . .1.23, 1.24, 1.27, 3.04, 4.26 Bi-Rite Enterprises, Inc v Button Master, 555 F Supp 1188, 1198 (SDNY 1983). . . . . . . . 15.56, 15.67 Bleistein v Donaldson Lithographing Co., 188 US 239 (US Sup Ct 1903) . . . . . . . . . . . . . . . . . . 8.67 Blendsegel, GRUR (2002), 629 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.32 BMG Canada Inc v John Doe, 2005 FCA 193, [2005] 4 RCF 81 . . . . . . . . . . . . . . . . . . . . . . . . 10.53

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Table of Cases Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, 563 US ___, ___, 131 Sup Ct 2188, 2194 (US Sup Ct 2011) . . . . . . . . . . . . . . . . . . . . . 1.05 Bollinger v Costa Brava Wine Co [1960] RPC 16 (Spanish Champagne case) . . . . . . . . . . . . . . . 11.17 Bonito Boats Inc v Thunder Craft Boats Inc 489 US 141 (1989) . . . . . . . . . . . . 2.27, 3.43, 3.57, 7.82, 8.78, 8.79 Brandir International Inc v Cascade Pacific Lumber Co 5 USPQ 2d 1089, 834 F 2d 1142 (2nd Cir 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.75, 15.51 Bremszangen, BGH, GRUR (2002), 820 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.14 Bright Tunes Music Corp v Harrisongs Music, Ltd, 420 F Supp. 177 (SDNY 1976) . . . . . . . . . . . 1.60 Bristol-Myers Co’s Application [1968] FSR 407, [1969] RPC 146 (EW Div Ct) . . . . . . . . . . . . . . 3.64 British Horseracing Board Ltd and Others v William Hill Organization Ltd [2005] EWCA (Civ) 863 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.29, 9.30, 9.36 British Leyland v Armstrong (1986) RPC 279. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17 Brunswick Corp v British Seagull Ltd, 35 F 3d 1527 (Fed Cir 1994) . . . . . . . . . . . . . . . . . . . . . . 12.28 BT v One in a Million [1999] FSR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.26, 11.28 et seq BUC Int’l Corp v Int’l Yacht Council Ltd., 489 F 3d 1129 (11th Cir 2007) . . . . . . . . . . . . . . . . . . 1.35 Budejovicky Budvar Narodni Podnik v Anheuser Busch [2009] EWCA Civ 1022 . . . . . . . . . . . . 13.10 Budějovický Budvar National Corporation v Rudolf Ammersin GmbH (C-478/07) [2009] ECR I-7721, [2009] ETMR 65 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.06 Budish v Gordon, 784 F Supp 1320 (ND Ohio 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 bundesligakarten.de, BGH, Judgment of 11 September 2008, GRUR (2009), 173 . . . . . . . . . . . 16.25 Burge v Swarbrick [2007] HCA 17, (2007) 234 ALR 204 . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17, 8.63 Campbell v Acuff-Rose Music, Inc, 510 US 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.64, 15.45 Capitol Records, Inc, v Thomas-Rasset, case No 06-1497 (MJD/LIB) slip op. (Dkt 457) (D Minn 22 July 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 Cardtoons, LC v Major League Baseball Players Ass’n, 95 F 3d 959 (10th Cir 1996) . . . . . 15.11, 15.34 Carflow Products v Linwood Securities [1996] FSR 424 (EWHC Pat) . . . . . . . . . . . . 3.66, 3.67, 3.69 Carletti, Re 328 F 2d 1020, 1022 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.103 Carol Barnhart Inc v Economy Cover Corp 773 F 2d 411 (2nd Cir 1985) . . . . . . . . . . . . . . . . . . . 8.75 Carpenter v Smith (1841) 1 Webster’s Patent Cases 530 (Ex) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.32 Carson v Here’s Johnny Portable Toilets, Inc, 698 F 2d 831 (6th Cir 1983) . . . . . . . . . . . . 15.15, 15.24 Carson v National Bank, 501 F 2d 1082 (8th Cir 1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.24 Carter Products, Inc, et al v Federal Trade Commission, 323 F 3d 523 (5th Cir 1963) . . . . . . . . . 16.49 Cartoon Network, LP, LLLP v CSC Holdings, Inc, 536 F 3d 121 (2nd Cir 2008) . . . . . . . . . . . . . 1.58 Castle Rock Entertainment v Carol Publ’g Group, Inc, 955 F Supp 260 (SDNY 1997), aff’d, 150 F 3d 132 (2nd Cir 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.13 C.B.C. Distribution and Marketing, Inc v Major League Baseball Advanced Media, L.P., 505 F 3d 818 (8th Cir 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.34 CCC Information Serv Inc v Maclean Hunter, 44 F 3d 61 (2nd Cir 1994) . . . . . . . . . . . . . . . . . . 9.51 CDN Inv v Kenneth A Kapes, 197 F 3d 1256 (9th Cir 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.50 CFPH [2005] EWHC 1589 PC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.31 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB (Case R 690/2007-3) [2010] ECDR 1 (OHIM Board of Appeal) . . . . . . . . . 2.107, 2.109, 2.119 Champagne [1961] RPC 116 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.10 Cherokee’s Opposition (O-048-08) the Appointed Person (Ms Carboni) . . . . . . . . . . . . . . . . . . 11.57 Chicago Lock Co v Fanberg, 676 F 2d 400 (9th Cir 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23, 3.43 Chippendales USA, Inc, In Re 622 F 3d 1346 (Fed Cir 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.11 Chiron v Murex [1996] RPC 535 CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.52 Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Golden Easter Bunny) (C-529/07) ECJ, Judgment of 11 July 2009 . . . . . . . . . . . . . . . . . . 16.15 Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75 . . . . . . . . . . . . . . 2.86 Claude Ruiz-Picasso v Daimler Chrysler [2006] ECR I-643, ECJ . . . . . . . . . . . . . . . . . . . . . . . . 11.41 CMI-Centers for Medical Innovation GmbH v Phytopharm Plc [1999] FSR 235 (EWHC Ch) . . . . . . . . . . . .