This post was updated on 5 November 2018 with additional comments (in italics). Note that a video of the meeting has been uploaded by UCL-IBIL on YouTube.
The annual Question the IP Judges event took place at UCL in London on 18 October. Hosted jointly by UCL-IBIL and MARQUES, it again provided perspectives on a range of IP issues from four judges – each of whom brought different experiences and views.
The judges taking part this year were:
- HHJ Melissa Clarke (Senior Circuit Judge, Designated Civil Judge for Thames Valley, Beds & Herts)
- Judge Octavia Spineanu-Matei (General Court, Court of Justice of the European Union)
- The Hon Mrs Justice (Vivien) Rose (England & Wales High Court)
- Harri Salmi (EUIPO Boards of Appeal member)
The discussion was introduced and chaired initially by Roland Mallinson of the MARQUES Council, and subsequently by The Rt Hon Professor Sir Robin Jacob of UCL.
The discussion was structured around questions that had been submitted in advance by the audience. Some of the questions were:
How much training do you get as a judge? Romania is a country where people tend to become judges early in their career, but at the General Court career-judges are in the minority: more judges have a background as an academic or advocate. In the UK, it is still the norm for people to become judges towards the end (or, if you prefer, “at the height”) of their legal career. However, training has increased lately and there is now a Judicial College, led by specialist judges. At EUIPO, members of the Boards of Appeal must have at least 10 years experience in IP, including five years in trade marks. Most but not all are legally trained (one is an architect by training) and on a panel of three, at least two must be legally trained.
How do you react when you get a trade mark case? The judges variously said they find trade mark cases fascinating, entertaining, relevant to daily life and something they can talk to non-lawyer friends about. But they also noted that trade mark law can involve a lot of technical phrases and tests, and requires a combination of knowledge and intuition. The law is quite complicated (but less so than, say, competition law).
How do you view expert evidence, for example from psychologists? The judges felt the ultimate expert should remain the judge. Many aspects of the law require judges to put themselves in the place of a construct of a person, and expertise should not be allowed to encroach into areas of common sense. Moreover, it results in more expense for parties. Expert evidence must also to be taken into account alongside other factors, and must be challenged: for example, evidence from Google Analytics may be skewed if the person searching is involved in the case and has been searching for the same terms a lot.
Do you have hearings? The Boards of Appeal have only had two oral hearings in 23 years, but there will be another one on 19 November in the MONOPOLY case (R 1849/2017-2, Kreativni Dogadaji v Hasbro), which will be open to the public. Hearings are unlikely to bring additional value beyond the written documents. At the General Court, each party only has 15 minutes to present its case, plus time for questions, so although experts can be heard they rarely are in practice. However, the UK judges admitted the English courts are “addicted” to hearings and said they would regret it if they were removed: they can lead to the judge changing their mind in some cases.
What do you think of non-traditional trade marks being filed as digital files?
There was a lot of debate about whether certain things, such as a 25-second film or a voice repeating the same word, functions as a trade mark. In particular, is it distinctive and non-descriptive? And does the consumer see it as an indication of origin. Some of the panel were open to the principle, but others were highly sceptical.
For example, in the 25-second video clip of Sniper Elite
showing the effect of someone being shot in the head, dissolving and dying, can
this be protected as the trade mark of the game? HHJ Melissa Clarke highlighted that they were
trying to protect the game mechanic but, if it was sufficiently distinctive,
there would be a huge overlap with other games and films. Examples were also contemplated like the
opening credits of James Bond with a gun accompanied by naked images and Pink
Panther walking across the screen.
Could a sound recording be used to create a permanent right
in Snow White? Sir Robin identified that
there was a problem as to whether it is used as denoting origin. Would it be right for Disney to get the trade
mark in Snow White?
HHJ Melissa Clarke pointed out that if a sound mark makes
the sign distinctive it would not be infringed by writing it on a page.
Should disclaimers be allowed? Again, the panel (and audience) were split on this question. Disclaimers (which are available in some EU and other countries but not in the EUTM system) can help to define what is protected as a trade mark and assist the registry, but concerns were expressed that the consumer does not know what is being disclaimed. In support of disclaimers, Harri Salmi noted that the
reality of the marketplace is that a mark can still be used, and often will be,
even if it is not on the trade mark register.