Since December 19th, 2019, it has been possible to file an initial standard patent application in Hong Kong at the regional patent office, whereas until then it first had to be filed in Europe or China. The office verifies the patentability. Other aspects have also been introduced in the new law. Is the system, in certain respects, becoming more like the one in France? Continue reading Hong Kong is changing its patent law
Since 1 July 2019, the protection that an SPC gives to medicines no longer extends to manufacturing for export outside the EU or for storage in the 6 months preceding the expiry of the SPC, under certain conditions.
What are the limits and conditions of application of the exemptions introduced by the entry into force of the Regulation amending EU Regulation 469/2009?
EU Regulation 2019/933 of the European Parliament and the Council of 20 May 2019, published in the EU Official Journal on 11 June 2019, came into force 20 days later, on 1 July 2019. Voted on 17 April 2019 by the European Parliament, it was the result of discussions and a legislative process, which we told you about here.
The Court of Cassation approves the patent and trademark attorney’s participation in the saisie-contrefaçon
A client’s usual French patent and trademark attorney (CPI – Conseil en propriété industrielle) can validly participate in the saisie-contrefaçon, even if he has already acted in this case. In its judgement of 27 March 2019, the Court of Cassation overturned the judgement of the Court of Appeal of Paris (27 March 2018, Manitou vs. JCB) which had ruled that a CPI could not be appointed as an expert by the judicial authority if he had previously acted as an expert on behalf of one of the parties in the same case.
A brief reminder of “saisie-contrefaçon”
Saisie-contrefaçon is a very powerful evidential measure thanks to its ex parte and restrictive nature. As a reminder, articleL.615-5 of the French Industrial Property Code sets out that:
“Infringement can be proven by any means.
To this end, any person who has the capacity to bring an infringement action can begin proceedings in any place and by any bailiffs, where appropriate assisted by experts appointed by the applicant, by virtue of an order made at the request of the competent court of civil jurisdiction, either by way of a detailed description, with or without samples, or by the actual seizure of the alleged counterfeit goods or processes and any related documents. The order may authorise the actual seizure of any document relating to the alleged counterfeit products or processes in the absence of these. […] »
It therefore enables, with the authorisation of a judge, the holder of an industrial property right who considers that this right has suffered an infringement, to have this recorded by a bailiff authorised to enter any place where this infringement could be recorded and to seize evidence of this infringement (objects suspected of being counterfeits, invoices, instructions, etc.).
The independence of the CPI had already been confirmed in a 2005 judgement
The question of the independence of the CPI during a saisie-contrefaçon, when he is the usual legal advisor of the submitter has already been a subject of debate. The Court of Cassation provided a response in its judgement dated 8 March 2005.
The Court of Appeal had initially considered that the bailiff conducting a saisie-contrefaçon could be assisted by an expert, but that the latter, by virtue of the principle of the right to a fair trial laid down in Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, had to be a person independent of the parties and could not therefore be the usual legal advisor of the submitter.
The Court of Cassation disagreed and therefore overturned the judgement, stating in particular that the CPI, even if he is the usual legal advisor of the submitting party, exercises an independent profession, whose status is compatible with his appointment as an expert of the submitter in the context of a saisie-contrefaçon […], a brief which does not constitute expertise under the terms of articles 232 et seq of the [new] code of civil procedure […]“
This judgement is significant since the submitter might see several advantages in using their usual CPI. In particular, the CPI has a good knowledge of the patent that is allegedly subject to an infringement and has generally been asked to analyse the alleged infringement before proceeding to the seizure.
Subsequently, this judgement by the Court of Cassation came to be widely observed so that it is now customary for the submitter’s usual CPI to participate in a saisie-contrefaçon.
The case presented below concerns a particular case in which the CPI had previously ruled on the infringement as part of a private expert assessment on behalf of the submitter and was therefore accused of bias.
The 2019 judgement goes further in dealing with the impartiality of the CPI
The dispute involved a first stage of expert assessment by the CPI, before the saisie-contrefaçon ruling
The dispute was between the two companies SA MANITOU BF (Manitou) and J.C. Bramford Excavators Limited (JCB). The latter specialises in the design and manufacture of excavators, tractors and compact loaders and believed that Manitou had reproduced the claims of two of its European patents.
As a result, JCB had appointed two CPI to test a machine produced by Manitou that was suspected of infringement and then, based on the results of those tests, brought proceedings against Manitou for counterfeiting the claims of the French party of its two European patents.
JCB subsequently obtained on request a ruling that authorised the saisie-contrefaçon operations to be undertaken at Manitou’s premises. This ruling also authorised the bailiff to be accompanied by two experts, nominally cited, who were the two CPI who had previously carried out tests on behalf of JCB.
By virtue of the principle of the right to a fair trial laid down in Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, Manitou requested the retraction of the saisie-contrefaçon ruling, claiming that by establishing a private test report the experts had sided with JCB before the seizure, which no longer enabled them to guarantee that they had undertaken the saisie-contrefaçon with the required impartiality.
The Court of Appeal had ruled that the previous involvement of the CPI in the same case necessarily undermined the principle of impartiality
The Court of Appeal stated in its decision that, by virtue of the right to a fair trial, the expert assisting the bailiff must be independent of the parties.
The Court of Appeal had therefore ordered the retraction of the saisie-contrefaçon ruling “that obviously, and regardless of their status which imposes on them ethical obligations, CPI cannot, without necessarily impairing the principle of impartiality required by Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, be appointed as experts by the judicial authority if they had previously acted as experts on behalf of one of the parties in the same matter“.
It is important to note that the Court of Appeal is not specifically challenging the participation of the submitter’s usual CPI in a saisie-contrefaçon procedure but rather the fact that the CPI has previously had an involvement in the same matter. This double involvement therefore constitutes, in its view, an infringement of the principle of impartiality of the expert required for a fair trial.
The Court of Cassation overturned the judgement of the Court of Appeal: the action of the CPI in the saisie-contrefaçon operations was validated
The decision of the Court of Appeal was therefore focused more on impartiality than on independence, unlike the previous case.
The Court of Cassation nevertheless overturned and cancelled the judgement of the Court of Appeal. In particular, it considered that “the fact that the CPI of the submitting party has, on the latter’s initiative, drawn up a report describing the characteristics of the offending product does not preclude their subsequent appointment, at the request of the submitter, as an expert to assist the bailiff in the context of a patent-related saisie-contrefaçon, since their brief is not subject to the duty of impartiality and does not constitute an expert assessment under the terms of Articles 232 et seq of the Code of Civil Procedure […]“
The Court of Cassation therefore approves the option for the submitter’s usual CPI to assist the bailiff in a saisie-contrefaçon since their presence does not violate the principle of a fair trial even when the CPI had been previously involved in an infringement regarding the same matter.
For patent owners, this removes any doubts that the Court of Appeal’s decision had sown regarding the need to consult two different CPI during the litigation process. The same is true for patent attorneys who see their independence no longer challenged but confirmed.
Like Chanel, do you prevent counterfeiting by involving the shopping center in which shops sells counterfeit goods?
The adoption of the PACTE bill on 11 April 2019 will soon lead to a number of changes with regard to patents in France
The draft bill on the growth and transformation of businesses (PACTE bill), adopted by the National Assembly on 11 April 2019, covers issues relating to patents in Articles 118 and 121 to 124, namely:
- the modernisation of the utility certificate, the duration of which is increasing from 6 to 10 years, and the possibility of converting a utility certificate application into a patent application;
- the forthcoming introduction of an opposition procedure against French patents;
- the forthcoming introduction of the examination of the inventive step for French patent applications;
- the removal of the limitation for patent invalidity actions; and
- the modification of the event generating the limitation period for acts of infringement.
Here is a presentation of these important changes that will take place with regard to patents.
The modernisation of the utility certificate
A utility certificate will now have a duration of 10 years from when it is filed (L. 611-2 2° CPI), compared with 6 years previously. In this respect, France is making the duration of its utility certificate consistent with that of this type of industrial property in foreign countries, for example the “Gebrauchsmuster” in Germany or the utility model in China.
In addition, it will not only be possible, as before, to transform a patent application into a utility certificate application, but also to convert a utility certificate application into a patent application.
This last provision reintroduces de facto the possibility of postponing the establishment of the preliminary search report for a patent application, which had been introduced by the law of 1968 and then abandoned in 2008. This will make it possible to simply file an application for a utility certificate, and then later transform this into a patent application. In this regard, it is certain that article R.612-5 CPI relating to the payment of fees will be amended to allow the payment of the search report fee when the utility certificate application is transformed into a patent application, which will have to take place before the deadline provided for by the regulation has passed. This deadline will probably be less than or equal to eighteen months from the filing or priority date, to allow for the correct publication of the application, in the interests of third parties.
In addition, this option of bilateral transformation will make it easier to correct the type of industrial property title applied for in the event of an error of the type of title made at the time of filing.
Finally, the relevance of such a transformation will have to be considered, in view of the preliminary search report and the new rejection criteria attributed to the INPI, particularly the lack of inventive step (see below). If there is any doubt therefore about the novelty or the inventive step of an invention, it may be appropriate to transform its patent application into a utility certificate application, in order to avoid the rejection of its patent application and obtain the issuance of a utility certificate, whose duration would be shorter (10 years for a utility certificate compared with 20 years for a patent), but which would however be correct.
Forthcoming introduction of an opposition procedure against patents issued by INPI
The law provides for the possibility of creating a right of opposition, in order to allow third parties to obtain the modification or the revocation of a patent before the INPI. The legislator has also provided for the possibility of ensuring that improper proceedings are prevented. It is thus reasonable to assume that only third parties with an interest in bringing proceedings will have the opportunity to oppose a patent, which would actually be prejudicial to their interests (for example, freedom of operation or prior patents).
The details are not yet known, but it is to be hoped that these will take place in the interests of European harmonisation, particularly with regard to the time limits (9 months from the date of issue) and substantive aspects applicable to opposition to European patents.
The advantage of such an administrative opposition procedure is therefore to enable a favourable decision to be obtained within a reasonable time and at a lower cost, compared to legal proceedings for a ruling of invalidity. The judiciary, in particular the Paris Court of Appeal, will certainly be called upon in appeals against decisions made by the INPI in the context of this opposition procedure, in a similar way to the decisions undergoing examination. The INPI undoubtedly has the capacity to put in place the human and material resources necessary to achieve this objective.
Forthcoming introduction of a substantive examination by the INPI
The main change brought by the bill for patent applicants in France is: the consideration, among other things, of the inventive step during the examination.
The INPI will now have the option of rejecting a patent application, pursuant to Article L.612-12 1st paragraph 7° CPI, “whose subject matter is not patentable under the terms of 1 of Article L.611-10”.
This is the main point resulting from the changes made in Article L.612-12 CPI dealing with the grounds for rejection by the INPI, which deem the examination undertaken by the INPI as a substantive examination, in relation most notably to the three patentability criteria of novelty, inventive step and industrial application:
- In terms of novelty, the legislator removes the notion of “manifest” absence of novelty. This extends the jurisdiction of the INPI, previously limited to the rejection of patent applications whose purpose was fully disclosed in a precedence, consideredstricto sensu. The INPI may therefore proceed to the rejection of patent applications whose purpose would not be original, according to a necessarily broader interpretation, which will certainly be closer to the interpretation resulting from French or European case law.
- Concerning the inventive step and this is the point that draws our attention, the INPI will have the power to reject a patent application whose purpose does not involve an inventive step. Here again, it is to be hoped that European harmonisation will play its part, and that the INPI’s review of inventive activity will be carried out mainly on the basis of a problem-solution approach, similar to European patent applications examined at the European Patent Office (EPO). As the examination of the inventive step requires more time than a mere examination of novelty, the INPI will certainly have to adapt its workforce accordingly, otherwise the length of the procedure will be increased. However, the INPI will probably be able to rely on the EPO’s experience in this area to avoid this pitfall, which may have been encountered by other States, Brazil being the most recent example.
- The reintroduction of the rejection criterion for a lack of industrial application, which had been abandoned in 2008 (former L.612-12 1st paragraph 5°), may facilitate the work of the INPI examiners in rejecting patent applications for “perpetual motion”. However, it will have only a very limited practical impact on other applications. In addition, it is likely that Article L.612-12 1stParagraph 7° does not apply to applications for a utility certificate, which is regrettable with regard to the criterion of industrial application. Indeed, inventors of “perpetual motion” will probably try to adapt to the INPI’s procedure to avoid a rejection for this reason by filing a utility certificate application.
In addition, vigilance of the regulatory provisions that will govern the examination procedure of applications by the INPI will be required. Indeed, the removal of the research report notion and formal notice of the wording of Article L.612-12 1st paragraph 7° broadens the possibilities for examination considerably. For example, the INPI would in theory have the capacity to reject a request before preparing the preliminary search report for lack of novelty or inventive step, for example citing a relevant document in an examination notice. More generally, the INPI could reject a patent application for lack of novelty and/or inventive step with regard to one or more documents not cited in the preliminary search report.
Critics of the substantive examination by the INPI mentioned the potential additional cost to patent applicants, resulting from the defence of these new patentability criteria. In this regard, it will be possible to consider, upon receipt of the preliminary search report and according to the relevance of any precedences cited, a transformation of the patent application into a utility certificate application, to which the rejection criterion in accordance with article L.612-12 1stparagraph 7° will not apply. Therefore, a title can always be obtained inexpensively in France, via the utility certificate. The increase in the duration of the latter to ten years makes this possibility much more feasible, because the average time for which patents are held in France is less than ten years1.
Finally, it should be noted that these provisions will only enter into force one year after the promulgation of the law, to patent applications filed on or after that date. For patent applications already filed or filed before that date, the examination by the INPI will remain unchanged (notably, rejection for manifest lack of novelty).
No limitation for patent invalidity actions
In the opinion of numerous experts, the application of a limitation period for patent invalidity actions was questionable, in insofar as Article 2224 of the Civil Code should not apply in this case. However, French case law did not seem to support this interpretation, even though the starting point of the limitation period was not fixed.
The introduction of Article L.615-8-1 CPI by the legislator makes it possible to remove any doubt about the option to initiate, at any time, a patent invalidity action. Thus, according to this article, “The patent invalidity action is not subject to any period of limitation”.
Moreover, the introduction of such an article had already been provided for in Ordinance No. 2018-341 of 9 May 2018, but its date of entry into force was subject to the date of entry into force of the agreement of the Unified Patent Court (UPC). This could take place in 2019, if the complaint filed before the German Federal Constitutional Court (Karlsruhe) against the agreement relating to the JUB, whose examination is scheduled this year, is rejected. The legislator, rightly, it would seem to us, has opted not to wait for a hypothetical favourable decision from a German court to decide this delicate point of the limitation of the patent invalidity action.
The question relating to the effect of a limitation already acquired is certain to arise. In this regard, in the aforementioned Ordinance (Articles 13 and 23 point II.), the legislator provided that the absence of a limitation applies to actions for which, on the date of its entry into force, the limitation period would not yet have expired. However, it is not certain that case law converges with the intentions of the legislator on this point, which will undoubtedly be raised by a patent holder in an action to render their patent invalid. Something to keep an eye on!
Modification of the event generating the limitation period for infringement actions
Pursuant to Article L.615-8 CPI in its current form, “The infringement actions provided for in this chapter have a limitation period of five years from the events giving rise to them. ». This then posed the problem of late knowledge, by the holder of a right, of any facts relating to the infringement.
The legislator wished to strengthen the possibility for the holder of a right to obtain compensation for damages, even for old acts, considering as a starting point of the limitation period, no longer the commission of an act of infringement, but its knowledge (actual or assumed) by the holder of the right.This means that under the new article L.615-8 CPI, “Infringement actions […] have a limitation period of five years from the day on which the holder of a right had knowledge or should have had knowledge of the last fact allowing them to exercise it”.
In this, the legislator wanted firstly, to protect the holder of a patent from the concealment of counterfeit acts by an infringer (such as the manufacturing for example, which could be concealed by the subsequent transport and storage in a territory not covered by the law, pending the expiry of the right). Secondly, the legislator wanted to protect third parties of a holder who might voluntarily “close his eyes” to the commission of acts of infringement, and discover them “by surprise”, well beyond a period of five years, so as to deliberately increase the duration of the infringement, and to do this to obtain compensation for the damage beyond the limitation period.
Provisional patent application: a welcome abandonment
Finally, we must applaud the abandonment – at least temporarily3 – of the creation of a provisional patent application, which would have brought no practical benefit at all. Indeed, a right of priority arises when a filing date is assigned, with neither the payment of taxes nor the presence of claims being mandatory for obtaining a filing date.
This means that the filing of a patent application by an identified applicant, even a minimal one (for example containing only a description of the invention) and at the smallest cost (without paying the fees due to the INPI) may still give rise to a right of priority. This can be used not only abroad by application of the Paris Convention (177 States), but also in France through the so-called “internal priority” mechanism (L.612-3 CPI). For this reason, the creation of a provisional application as originally provided for in the PACTE bill would have been useless.
1. Baudry M., Dumont B. (2018), “Les brevets : Incitation ou frein à l’innovation” [Patents: Incitement or an impediment to innovation?] Volume 13, page 35, quote 35, February 2018.
2. Ifame J. (2018), “Prescription de l’action en nullité de brevet: du nouveau mais toujours pas de solution?“, [Limitation of patent invalidity action: new but still not a solution?], in French.
3. The creation of the provisional application now seems to be envisaged by decree, following the opinion of the Council of State of 14 June 2018 on the PACTE bill, point 64, according to which “no legislative provision is necessary to implement the proposed reform”.
In the field of “standard-essential patents” (SEP), which model should be adopted when setting the licence fee amount? With the publication of a new draft guide to recommendations for 5G technology licences in January 2019, industry operators are continuing the debate.
At the dawn of a massive deployment of the Internet of Things together with the arrival of 5G and the exponential growth of available data, interoperability is a growing need. So, how can compatibility be ensured between connected devices that are supposed to work together or on the same network, but are diverse and varied and manufactured and sold by competing operators?
The answer lies in the creation of technical standards which must avoid redundant investments, ensure the compatibility of products and respect all operators across the various markets concerned.
But a standard necessarily implies an “essential patent“. So, as we have already mentioned in previous articles, the holder of a standard-essential patent must issue licences to market operators with “FRAND” conditions: “Fair, Reasonable, and Non Discriminatory“. Some decisions have already clarified these conditions, and in November 2017, the European Commission published its recommendations that we then reported here. But a decision still needs to be made on several important questions. We will deal here with the following question: how can the fee amount of such a licence be calculated?
Old Testament, Hosea 8, 7.
On 22 June 2018 an interesting decision was issued by the US Supreme Court (USSC) relating to an award of damages in WESTERNGECO LLC v. ION GEOPHYSICAL CORP. Reversing the decision of the Federal District Court, the USSC decided to award damages for loss of profits which occurred outside the US. This was a reversal of the previous position held by US Courts where lost foreign sales were generally considered not recoverable through enforcement of a US patent. In order not to over, or under, interpret this decision and its consequences, the facts of the case are important. Here is the Supreme Court’s own summary:
Petitioner WesternGeco LLC owns four patents relating to a system that it developed for surveying the ocean floor. The system uses lateral-steering technology to produce higher quality data than previous survey systems. WesternGeco does not sell its technology or license it to competitors. Instead, it uses the technology itself, performing surveys for oil and gas companies. For several years, WesternGeco was the only surveyor that used such lateral-steering technology.
In late 2007 respondent ION Geophysical Corporation began selling a competing system. It manufactured the components for its competing system in the United States and then shipped them to companies abroad. Those companies combined the components to create a surveying system indistinguishable from WesternGeco’s and used the system to compete with WesternGeco.
WesternGeco sued for patent infringement under §§271(f)(1) and (f)(2). At trial, WesternGeco proved that it had lost 10 specific survey contracts due to ION’s infringement. The jury found ION liable and awarded WesternGeco damages of $12.5 million in royalties and $93.4 million in lost profits.” (Emphasis added).
§ 271(f)(1) of the U.S. Title 35 (Patents) addresses the act of exporting a substantial portion of an invention’s components from the US to a foreign destination. §271(f)(2) addresses the act of exporting components that are specially adapted for an invention, once again, from the US to a foreign destination.
ION filed an appeal and the Federal circuit reversed the decision regarding the lost profits award on the basis that lost foreign profits are not recoverable, in principle. Based on the 22 June 2018 decision of the USSC, this principle does not hold anymore: foreign lost profits ARE now recoverable, at least under specific conditions.
In a nutshell, the USSC decided that once domestic infringement is established, the overriding principle of award is to provide a remedy which is commensurate with the harm caused by the infringement. The fact that the lost profits arose from the loss of foreign contracts was not relevant to assess damages.
At first, anyone can see the fairness principle underlying this decision. The action of the infringer enabled the purchaser to dispense with the surveying services of the patentee. The loss caused could have threatened the very existence of the company.
However, among the five Supreme Court judges, two dissented with this approach. One of the dissenting judges, Judge Gorsuch J, raised the issue that the infringer becomes suddenly liable for acts beyond its control and that it has no power to stop. Hence, once the supply of the components necessary to manufacture the surveying devices is carried out, the infringer cannot retract it. It becomes thus potentially liable for all future “lost contracts” that can be established as being the direct consequence of the supply forbidden by §271(f)(1) and §271 (f)(2) (cf. supra). Although such a proof is usually difficult to establish, this was one of the cases where it was successfully argued, because there were no other competing players in this specialised market than the litigants themselves.
If the acts of using the invention had been carried out in the US, the purchaser in this case would have become an infringer and could have been stopped. This is not the case if the purchaser is in fact using the invention outside of the US. The liability of the US supplier/infringer mushrooms suddenly without clear limits.
However the USSC balanced this potential unknown liability with the principle that the patentee has to be commensurately compensated, and decided in favour of the latter.
This decision now stands as a strengthening of patent rights. This will be pleasing to the owners of US patents and increase the value of their US portfolio. However to be applicable the patentee had not only to establish a domestic infringing act of exporting abroad but also a clear and direct consequential link between the act and the loss of profits. In this case this was possible due to the combination of :
- a particular business model where the patentee kept its patented technology for itself and offered only its services; and
- a market where only one competitor existed, said competitor being the infringer.
This particular combination of facts is not likely to be very frequent. Nonetheless, there is no doubt that U.S. exporters as well as U.S. patentees will be keeping this decision very much in mind as a biblical warning against unforeseen consequences of unlawful conduct.
Obviously, the famous luxury shoes designer Christian Louboutin has made red sole shoes his trademark since 1992 to the extent that this characteristic is even sometimes used to designate his creations rather than his name.
In order to protect himself from competition, Mr. Louboutin registered his red sole as a French figurative trademark on November 29, 2000.
Since a decision of the Court of Justice of the European Union dated May 6th, 2003[i], it is effectively possible to register a colour as a trademark, on the condition that the color constitutes a sign that can be graphically represented and capable to distinguish the products and services of the holder from those of other companies.
More precisely, the graphic representation must be “clear, precise, complete by itself, easily accessible, intelligible, durable and objective”, as listed by the CJUE in a 2002 case[ii].
The trademark in question filed by Mr. Louboutin was composed of a picture of a sole with the following description: “shoe sole of the colour red”, and was designating “Shoes” in class 25.
Further to several judicial cases Mr. Louboutin brought, in order to safeguard his rights from opponents using red soles, all lost, his French Trademark n°3067674 was finally canceled in 2011 during the C. Louboutin versus Zara France case.
Accusing Zara France of counterfeiting because the firm was commercializing red-soled shoes, Mr. Louboutin’s arguments were dismissed. The French Court of Appeal (Cour d’appel)[i] and Supreme Court (Cour de cassation)[ii] ruled that “neither the form, nor the colour of the sign has been determined with enough clarity, precision and correctness to confer distinctiveness to the sign permitting to identify the origin of the shoe”.
Indeed, the colour of the sole was just described as “red” and the picture did not enable to immediately identify a sole without reading the description.
Further to this failure and to the loss of his trademark, Mr. Louboutin decided to file a new French trademark application in 2011, but more precise, in order to avoid cancellation.
This time, he chose to file a sketch of a high heeled sandal in dotted line, except for the outline of the sole which was continuous.
The following description was added: “The trademark consists of the colour red (Pantone 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark).” and the application was designating “High-heeled shoes (except orthopaedic footwear)” in class 25.
This new trademark has permitted to reverse the trend and Mr. Louboutin finally won a new case on the basis of counterfeit of his red sole against the French company Kesslord.
Indeed, the red colour applied to the sole has been considered as a tridimensional sign satisfying the graphic representation’s requirements and, therefore, constituting a valid trademark.
Kesslord is a French company specialized in leather goods (bags, shoes…).
It offers to its customers to personalize items by choosing colour and texture, and proposes notably red soles for shoes.
When Mr. Louboutin found this out, he sent a formal notice to Kesslord, asking to withdraw the red colour from its personalization catalogue.
As a conservation measure, Kesslord has withdrawn the red colour of its catalogue and, a short time afterwards, asked for cancellation of Mr. Louboutin’s French trademark n°3869370, arguing that it didn’t satisfy the trademark’s requirements of clarity, precision, accessibility, intelligibility and objectivity.
In fact, Kesslord considered that the sign was likely to vary depending on the type of shoes on which it was applied. Consequently, the exact extent of the protection was not determined.
Kesslord wanted the Court to reduce the protection solely to “red colour (Pantone code n° 18 1663TP) applied to the totality of the sole of a fine stiletto, doted of 10cm heels, the colour not being continued on the heel”.
On Mr. Louboutin’s side, he argued that the sign was a guarantee for the commercial origin of the shoes on which it was affixed and permitted to identify two concrete and immediately perceptible elements: the red colour defined with the Pantone Code and the location on the outside sole of the high heel which made of it a position trademark. The rest of the shoe, dotted on the sketch, was not part of the field of protection, in a manner that if the shoe varies, the sign would stay constant.
The First Instance Court of Paris (Tribunal de grande instance) ruled on March 16, 2017 that the figurative trademark was distinctive and able to be graphically represented, so valid according to CJCE case-law, and rejected the cancellation action.
As the graphic representation of the trademark comprised a defined form, which was a high heel‘s sole with a clear curve, and a distinctly identified colour with a Pantone code in the description, the criteria of clarity, precision, objectivity and consistency of the graphic representation required by the CJCE were fulfilled.
This new decision marks a new era for Mr. Louboutin, who can finally defend his rights on the red sole.
But this saga is far from over: a new episode is coming up soon as an appeal was filed on April 3, 2017 against the First Instance Court’s decision.
We should therefore be informed in the near future if the French jurisdictions will consecrate a monopoly for the position trademark of the red sole shoes.
 Tribunal de grande instance de Paris, 3e ch., 1re sect., 16 mars 2017 (RG 2015/11131 ; M20170192)
 CJCE, 18 June 2002, Koninklijke Philips Electronics NV vs. Remington Consumer Products Ltd., C-299/99 and CJCE, 25 January 2007, Dyson Ltd. vs. Registrar of Trade Marks, C-321/03
 CJCE, 27 November 2003, Shield Mark BV vs. Joost Kist h.o.d.n. Memex, C-283/01
[i] Cour d’appel de Paris, pôle 5 – ch. 1, 22 juin 2011, n°09/00405
[ii] Cour de cassation, civile, ch. Commerciale, 30 mai 2012, 11-20.724
[i] CJCE, 6 May 2003, Libertel Groep vs Bureau Benelux Marques, C-104/01
[ii] CJCE, 12 December 2002, Ralf Sieckmann vs Deutsches Patente und Markenamt, C-273/00
A new Rule at the U.S. Patent Office establishes that communications with foreign patent attorneys can be privileged.
Since its coming into force on 7 December 2017, a new Rule (§ 42.57)[i] establishes that US patent agents, as well as foreign patent “practitioners”, who are qualified in their jurisdiction, will receive the same treatment as US attorneys on all issues affecting privilege or waiver. 82 Fed. Reg. 51570-75 (Nov. 7, 2017).
This clarification was long overdue as the status of a communication between a litigant and its domestic or foreign patent agent had been a hotly debated topic in the United States (US) for the last 50 years.
This is of real importance as patent litigations on an international level frequently involve the US, including challenges regarding the validity of patents which are heard before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).
Privileged information and the US discovery process
In the US, pre-trial steps will generally involve the dreaded “discovery” process[i]. In this process reciprocal demands will be made by the parties for production of documents, depositions of parties and potential witnesses, written interrogatories etc…. The theory underlying the US rights of discovery is that all parties will go to trial with as much knowledge as possible and that neither party should be able to keep secrets from the other (except for protection against self-incrimination). This common law pleading principle is mainly applied to civil disputes and is the object of some detailed dispositions[ii] at the Federal level.
Therefore some information may not have to be disclosed and may be kept secret. Such information is described as being “privileged”. Legal advice provided by an attorney to her/his client can enter the category of privileged information upon very specific conditions[iii] and is generally referred to as being “client-attorney privileged”.
Litigation involving patents offers several very specific challenges when the parties come to the discovery step and have to determine if a communication is, or is not, privileged. In particular this is due to fact of:
- the nature of patent-related communications: they may comprise a great deal of highly sensitive technical information.
- the legal status of the advisers: they are frequently not registered before a US court to practise law and therefore, strictly speaking, not “attorneys”. They can be US patent agents, or in-house counsels. Even more difficult is the case of foreign patent practitioners, who can also be either independent or in-house advisers of the litigant.
The new provisions now clarify at least the issue of professional status before the USPTAB of qualified independent patent practitioners such as the French CPI (Conseil en propriété industrielle), German (Patentanwalt) and British CPA (Chartered Patent Attorneys).
It is however always worth keeping in mind that the “privilege” status is to be decided on a document-by-document basis. The nature of the communication is as important as the person writing it in order to decide if the privilege can be asserted. The communication must be confidential in nature and “reasonably necessary and incident to the scope of the practitioner’s authority”[iii]. Opinions relating, for example, to commercial matters are unlikely to qualify. Likewise, results of a patent search, even if carried out by a qualified patent attorney, may not be privileged although a detailed patentabilty opinion based on said search should be.
Thus, the issue of privileged information will stay an exceptionally delicate matter for patent attorneys worldwide and should be considered most carefully before starting any litigations involving countries, like the US, which have discovery-like provisions.
[ii] Chapter V of Federal Rules of Civil Procedure
[iii] The standard set forth in United States v. United Shoe Machinery Corp. 1918 is often cited as “the” test for privilege:
“The privilege applies only if (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication is made (a) is a member of the bar of a court, or his subordinate and (b) in connection with the communication is acting as a lawyer; (3) the communication related to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion on law or (ii) or legal services or (ii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.” (emphasis added).