TechBlog

 Eleanor previously wrote about the Vodkat/Vodka passing off case.

The result of an appeal in that case has just been published.

The makers of Vodkat argued that the right to prevent an imitation of a product category (such as Vodka or Champagne, as opposed to a particular brand such as “Smirnoff”) only exists for “premium” products. Its case was that Vodka is not a premium product but rather just an “alcohol delivery device”. Nice!

The Court agreed that Vodka is not a premium product, but said that didn’t matter, i.e. Vodka producers could prevent the sale of Vodkat because a punter might buy it thinking he/she was buying a “proper” Vodka.

During the case various examples were given such as whether a manufacturer of butter could prevent a margarine producer using the word “butter” in its product name. According to the Vodkat appeal the answer is “probably yes”.  This interested me.

What about the product “Utterly Butterly”. It’s not butter, but is that clear to all the punters who buy it? If not then a butter manufacturer could probably attack it.

Contrast that with “I Can’t Believe it’s not Butter”. That brand name makes it clear the product isn’t butter (thus removing any risk of passing off) while still making the average punter think of butter (at least by association). Genius.

So what the Vodkat people need to do is rebrand their product as “I can’t believe its not Vodka” and then make sure its retailers don’t put it too close to “real” Vodka on its shelves.

Douglas “I can’t believe he is not a High Court Judge” Mathie

Sorry about the lack of post recently but I am just back from New York City.  As with most husbands in New York I seemed to spend a lot of time in tourist shops looking at T-shirts with this logo:-

What an amazingly valuable trade mark.

Because it is a registered mark the City of New York can prevent its use (misuse), and also get a royalty payment for every T-shirt, mug etc. sold that carries the logo.

Interestingly it seems that charging royalties for use of the logo on merchandise is a relatively new thing, and that when the logo was first launched in 1976 it was available for use free of charge. This makes sense – the logo was created to prmote New York and not as a revenue generator. However, now the brand is so well known it can do both at once.

Interesting Fact – In researching this article I found out that New York has an official state muffin. It’s apple.   

I read on the University of Edinburgh Law School Blog that the Scottish Law Commission is going to revisit the law on security over moveable propery, i.e. everything other than land or buildings.

This will include a review of how a lender can take security over a borrower’s Intellectual Property such as patents or copyrights.  By “security” I mean getting some right to the asset where the borrower defaults.

This is a bit of a hobby horse of mine, and I have quite a lot of experience in drafting and enforcing securities over IP.

At present the only cast iron* way for a lender to have security over IP owned by a Scottish Company, i.e. one with its registered office in Scotland, is for the lender to take ownership of the IP (with a promise to return it to the borrower when the loan is paid off).  This is consistent with the Scots law doctrine of “no security without possession”.

English law is more relaxed about security over IP – you can get pretty good security under a English law debenture. 

However, English lawyers should be aware that if the IP is owned by a Scottish Company then the debenture may not offer the required protection.   This is not just theoretical.  I have seen English lawyers fall into this trap a couple of times, and one time it was very costly. 

So if any English lawyers are reading this, and your client is taking security over a Scottish Company with significant IP assets, e.g. a Whisky company that has a lot of registered trade marks, then give me a call.

* For the law geeks out there a floating charge that includes the IP assets does give the lender some protection, but does not protect the lender against the risk of pre-crystallisation alienation of the assets by the borrower.

Following on from last month’s post about EU “indicators of geographical origin”, it has leapt to my attention that the Scottish Government is consulting on an application by the Salmon Net Fishing Association of Scotland to have “Scottish Wild Salmon” registered as a Protected Geographical Indication (PGI).

The application covers Scottish Wild Salmon caught solely in Scotland and makes reference to the unique qualities of Scottish salmon: “Fresh Scottish Wild Salmon are bright silver, with a dark blue back and firm, with scales intact….The fish are in peak physical condition and are recognised as excellent for eating fresh or smoking to make the famous Scottish wild smoked salmon recognised by many of Europe’s top chefs and restaurants.” The Scottish Government’s consultation requests that interested organisations mullet over and provide comments (or objections) by June 4, 2010.

In related “indicators of geographal origin” news, Yorkshire Forced Rhubarb has successfully gained Protected Designation of Origin (PDO) status. The rhubarb, grown by candlelight, is grown at 12 farms in West Yorkshire’s vaguely sinister sounding ‘Rhubarb Triangle’ between Morley, Wakefield and Rothwell (near Leeds). Yorkshire Forced Rhubarb is the 41st British product to become an EU Protected Food Name, and all 41 products can be viewed here.

Janet Oldroyd, of the Yorkshire Rhubarb Growers Association, said: “Awarding PDO status to Yorkshire Forced Rhubarb is fantastic news for British food. The public will be certain that our product is exactly of the quality and flavour expected of Yorkshire Forced Rhubarb as all producers must not only be in the designated area, but will be extensively audited, ensuring traditional production methods are maintained.”

To find out why rhubarb was once more sought after than opium – and lots of other rhubarb facts – you can visit Ms Oldroyd’s website.

 Another blog entry about drink!

The other night I was watching TV and the break bumpers for the show (the mini adverts at the start and end of the main adverts) were for a drink called “Zamaretto” which appears to be flavoured Amaretto.

I had two thoughts: i) Yeuch; and ii) that has to infringe the “Amaretto” trade mark.

Eleanor and I discussed it the next day. It turns out that Amaretto is not protected by a registered trade mark (or at least not for drinks). Presumably this is because it is a generic term.

Let me explain. You can’t get registered trade mark (RTM) protection for a description of the goods being sold. So you can’t get a RTM for “Cola” or “Fizzy Drink”, but you can get a RTM for a brand such as “Pepsi” or “Cresta“. (Showing my age there!).

This prevents a RTM creating a product monopoly, e.g. a monopoly over cola.

(Product monopolies are not the job of registered trade marks, rather RTMs are limited brand monopolies, or badges of origin.  If you want a product monopoly you need a patent (harder to get) or a design right).

What happens if your product name starts to be used as a generic description of a product? For example, petrol used to be a brand name. Similarly lots of us call any vacuum cleaner a Hoover.

Well there is a risk that you lose your RTM protection. This is known as “genericide”. Nice term!

I am told that the fear of genericide drives Hoover to send out grumpy letters to any newspaper or tv company that uses the term “Hoover” generically. I don’t know if this is true. Perhaps I’ll get a letter from Hoover. If I do then I will post it here.

Also, as explained in Eleanor’s post on Vodkat a seller of an item with a generic and recognised product name, e.g. Vodka, can use the law of passing off to prevent sales of other types of goods under that generic name.   So, in our case, if Zamaretto was not made by using a tradtional Amaretto “recipe” (with the addition of flavour) then one of the traditional Amaretto sellers may be able to force it to rebrand.

Also I just noticed that Zamaretto is made by the same people that sold Vodkat.

Mine’s a beer. Cheers.

The family of popular science fiction author Philip K. Dick alleges that Google is infringing the writer’s intellectual property rights.

In 1968 Dick wrote the novel “Do Androids Dream of Electric Sheep”, and in 1980 the book was made into a movie (and given the distinctly snappier title of “Blade Runner”). Blade Runner’s plot revolves around “Nexus 6 replicants” – robots who look like humans. Google has just launched a new smartphone named “Nexus One”.

Google claims that it is just using the word “Nexus” to mean a place where things converge. Isa Dick Hackett, Dick’s daughter, is quoted in the Telegraph as saying: “Google takes first and then deals with the fallout later”. “In my mind, there is a very obvious connection to my father’s novel. People don’t get it. It’s the principle of it. It would be nice to have a dialogue. We are open to it. That’s a way to start.”

I’m sympathetic to Ms Hackett’s view. Blade Runner is one of the most famous and influential science-fiction films of all time. It’s a highlight of Harrison Ford’s glittering career and star villain Rutger Hauer has lived off it ever since. It’s fair to say that it has given the term “Nexus” far wider exposure than it would otherwise have attained (especially amongst geek sci-fi “fanboys”, who just happen to also like buying new technology).

However, is Google actually breaking any laws? For a start, it’s not clear which type of intellectual property right the Dick family is seeking to rely on. It’s unlikely to be copyright, because Google aren’t using a specific Nexus 6 replicant character. (In any case there’s probably a question mark over who would own the copyright in the Blade Runner characters – it could be either the writer of the book or the director of the movie).

The Dick family is more likely to seek to rely on “Nexus” being a trade mark, or an indication of origin which, when used, would make consumers think of Philip K. Dick and his books. There are numerous hurdles for the Dick family to clear here, the most difficult being that “Nexus” was never actually trade marked by Philip K. Dick. (In contrast, the term “droid” from Star Wars was trade marked by George Lucas, and Motorola recently paid Lucas to license “Droid” for their new phone.)

In the absence of a registered trade mark, the basic question you have to ask is: “Is the use of “Nexus” going to make anybody think that the phone has been created by, or in some way approved by, Philip K . Dick?”

In a peculiar way, it occurs to me that the plot of Blade Runner may actually help Google here. As every good geek knows, Nexus 6 replicants have an in-built 4-year lifespan. It could be argued that there’s no way Google would want to invite an association with Nexus 6 replicants, because this might make consumers think that their phone is likely to seize up and die after 4 years!

ps – Deckard was a replicant.