Commission publishes Frequently Asked Questions

The long-awaited FAQs on the block exemption have been published today, perhaps as a late birthday present for me: the press release is at http://europa.eu/rapid/pressReleasesAction.do?reference=IP/12/915&format=HTML&aged=0&language=EN&guiLanguage=en.

I'll post a commentary on them as soon as I have a chance to get my head round them. Only 12 pages, 18 questions, not including the most frequently-asked question of all ("When will the FAQs be published?") which they nevertheless answer ... There must be a lot of questions that have not been asked sufficiently often, as I'm sure there are more than 18 questions calling for answers.

Scania says no to NEVS

JustAuto reports that Scania has refused to allow the new owner of SAAB to use the griffin logo trade mark. Scania's position on the use of its trade mark was heralded in this press release a few weeks back, and now they say that it is fear of finding the logo applied to Chinese trucks that has prompted the refusal. That does seem to me to be based on a rather atavistic view of Chinese intellectual property law and practice, but it's their choice even if the explanation isn't a particularly attractive one.

Car rental industry faces patent problems

Auto Rental News reports that patent infringement actions are hampering the activities of car rental companies. At present this is confined, it seems, to the US, but the phenomenon could spread, given that if a company is prevented from using patented technology in the US they might well decide not to bother with it elsewhere.

The problem arises from the - er - liberal way in which patents are handed out in the US for software and business methods. Although there is some patenting of such subject-matter in Europe, it is relatively contained though still controversial. In the US, it is like an epidemic. Many businesses have found their operations threatened by patents covering things that, to a European, ought to be nothing to do with the patent system, and now it seems the car rental industry is suffering as new ways of completing rental agreements without human intervention, and other automated business methods, become more and more common.

Commission investigating possible wiring harness cartel

There are investigations going on in several parts of the world (the US and Japan, for two) into cartels in the automotive parts sector. Now the European Commission has opened an investigation into suspected cartels for the supply of wiring harnesses in the European Economic Area. The Commission will, it says, now "treat this case as a matter of priority, without prejudging the outcome of the investigation". The full press release is here.

New requirements will affect trailer retailers

The SMMT has alerted trailer retailers to new requirements that they will have to meet from October, here. They will have to record certain details, keep them for six years, and provide them on demand to an authorised official of the Vehicle Certification Agency.

Service of notice must be in accordance with contract

In Ener-G Holdings Plc v Hormell [2012] EWCA Civ 1059 (31 July 2012) the Court of Appeal had to consider whether notice had been given according to the terms of the contract. The argument arose because the outcome would determine whether subsequent proceedings had been issued in time or not. The facts of the case are interesting, but need not detain us here: the point is that the case clearly illustrates the importance of getting the "notices" clause, tucked away among the boilerplate clauses (and usually dismissed as such), right. Whatever the parties agree, they need to stick to, and both must make sure they understand clearly what the clause requires them to do.

Restoring dissolved company validates proceedings against it

So said the Court of Appeal in Peaktone Ltd v Joddrell [2012] EWCA Civ 1035 (26 July 2012) in what could be a very important decision for anyone trying to recover money from a broke company.

South Africa: the BMW spares case

Reading a case about protection of designs for car spares takes me back to the days of my youth. There haven't  been enough since BL v Armstrong. But you have to go quite a long way to find them these days: this one comes from South Africa, whose Designs Act no 195 of 1993 (available here, from the Japan Patent Office, oddly enough) is another exercise in nostalgia: there are many phrases that bring back fond memories of the original version of the Registered Designs Act 1949, on which presumably it was based. One important thing about the South African Act, though, is that it protects both aesthetic and functional designs, with different criteria for protection of the two categories. The requirements for protection of functional designs will also ring bells for readers familiar with Part III of the Copyright, Designs and Patents Act 1988 (and who isn't?). It's a real trip down memory lane. The most significant thing is that there is an exclusion from protection for functional designs where the article is a spare part (section 14(6)).

Like us, the South Africans have been wrestling with the problem of intellectual property protection for spare parts for some time: three decades, according to the AfroIP blog, starting with a boat-building case called Schultz v Butt 1986 (3) SA 667 (A) in which the defendant used a hull made by the complainant to make a mould from which to make hulls which it then sold in competition with the design owner, a case which might be considered to be rather clear-cut. The most recent case dates from 25th ultimo.

That case is BMW AG v Grandmark International (Pty) Ltd and another [2012] ZAGPPHC 139 and the judgment of the North Gauteng High Court, Pretoria, should you wish to read it in all its glory, is available from the South African Legal Information Institution, the equivalent of BAILII, here. There's a claim that the defendant was in contempt of an earlier court order, plus claims of registered design infringement and trade mark infringement. It's the design claim that's interesting, as the contempt case seems to have gone off at half cock and the trade mark case was defeated, ironically, by earlier cases in which BMW was the claimant.

Four registered design for the model known by its BMW code as the E46 but better known as the 3 Series (fourth generation, 1998-2005) were involved. This model was assembled in eight places around the world in addition to Munich, including a site in South Africa, where BMW has been the favourite premium brand of car for some time: in 2012 it held 7.9 per cent of the overall market, 33.9 per cent of the premium segment, so there's a significant parc of BMWs needing spares.

The registrations were for aesthetic designs, namely a bonnet, headlight, grill and fender [sic]. Surprisingly, the court took the view that the designs were in fact functional, and that they had been craftily registered as aesthetic designs just to circumvent section 14(6). How could that be? The court applied what a scholar of our 1988 Act would recognise as a "must-fit" and "must-match" analysis, and concluded that the designs all served a specific purpose – they had to look and fit a certain way to serve their purpose. The Act defines a functional design as one ""having features which are necessitated by the function which the article to which the design is applied, is to perform" - language more related to the concept in our law of "dictated solely by function" than the "must-fit" and "must-match" exceptions. I don't find it very convincing - but not being a South African lawyer, what I think probably doesn't count for a lot.

Moreover, the court decided that the designs failed the novelty test applicable to aesthetic designs, because they were anticipated by previous designs for BMW body parts. They were nothing more than developments of previous BMW body part shapes. That approach could deprive the vast majority of designs for spare parts, especially visible ones, of protection. But it sounds as if there will be an appeal - there almost has to be, given what's at stake - so perhaps we'll learn in due course that this is not in fact what the law means. Still, a very interesting case for design enthusiasts!

PS: a great article about the case, by Lodewyk Cilliers of Spoor and Fisher, here. 

US: Land-Rover Sues "British Northwest Rover" Restoration and Repair Company

My friend Mike Atkins, a trade mark attorney in Seattle, reports on his blog that Land-Rover are taking action against a repairer which calls itself British Northwest Rover (and apparently, or rather allegedly, used to call itself "British Northwest Land-Rover). Why the manufacturer might consider these uses to be infringements of its trade marks hardly needs explaining. But in the USA the doctrine of "nominative fair use" is rather wider, and more flexible, than the equivelant in the UK (section 11 of the Trade Marks Act 1994), and there is at least a chance that the repairer will be able to establish that it is merely using the trade mark to indicate the sort of vehicle for which it offers services.

In this country, I think we could safely say that including the trade mark in your business name is never going to satisfy the test in section 11, which (as far as this defence is concerned) demands that the use be in accordance with honest practices in industrial and commercial matters. Although that phrase, taken as it is from the European Community directive, is far from clear (and seems to cover only a situation in which the defendant's use of the trade mark is in some way dishonest, which imports a degree of subjectivity not usually found in trade mark law), it is almost inconceivable that it might permit a repairer to use the name of a vehicle maker in its corporate or business name. That would surely imply a connection with the manufacturer, a relationship going beyond whatever relationship might exist, which would rule out the use of the name. See AB Volvo v Heritage (Leicester) Ltd [2000] FSR 253, and Case C-63/97, BMW v Deenik. So the moral is, whatever the courts in the States might say, don't try that here.