If you did not recognize as describing the colour scheme used on a Rubik’s Cube, not to worry – neither did the Board of Appeal for the Office of Harmonization for the Internal Market (OHIM), which is the central body for registering European trademarks.

In 2007, Seven Towns Ltd., the owner of the rights to the Rubik’s Cube, applied for a Europe-wide “colour” trade mark for the Rubik’s Cube. Along with the description above, Seven Towns provided a list of the specific colours used on the Rubik’s Cube, as defined by the colours’ numbers. , in order to be eligible for a Community (Europe-wide) Trade Mark (“CTM”), a mark must “consist of any signs capable of being represented graphically…provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.” According to European , the graphical representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

After OHIM examined Seven Towns’ “colour” CTM application, OHIM informed Seven Towns that it was changing the description of the CTM from a “colour” mark to a figurative trade mark. OHIM reasoned that a “colour” mark cannot be spatially limited, and the Rubik’s Cube’s colours are separated into six square surfaces of nine equal squares each, all separated by black lines. However, Seven Towns objected to the change, and petitioned OHIM to reverse its decision. Two years later, OHIM finally responded to Seven Towns’ multiple attempts at communication, and stated that it was going forward with the figurative trade mark description, which it eventually rejected entirely. Seven Towns appealed to the OHIM Board of Appeal, but its application for a “colour” CTM was again rejected. Seven Towns then to the European Union Court of Justice.

Seven Towns made three main arguments before the EU Court of Justice: 1) OHIM took too long to respond to Seven Towns, and the Board of Appeal therefore had no right to re-examine the substantive issues of the case. 2) The OHIM Board of Appeal rejected the application outright, rather than remitting the issue to OHIM, which took away Seven Towns’ right to be heard. 3) The OHIM Board of Appeal invented a test with no legal basis, and then misapplied that test.

The EU Court of Justice rejected the first two procedural arguments. With regard to the third argument, the OHIM Board of Appeal applied a test of “whether a reasonably observant person with normal levels of perception and intelligence would, upon consulting the Community trade mark register, be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination.” Seven Towns argued that “normal levels of intelligence” and “huge amounts of intellectual energy” are not legal terms, and the outcome of the test is therefore unpredictable. Seven Towns further argued that the correct test to apply was the graphical representation test, as described above.

The Court, applying the logic of the OHIM Board of Appeal, held that the two tests can be applied simultaneously. The main reason for the graphical representation test is so that other traders can consult the trade mark register, and determine precisely what marks are protected. Therefore, the Court determined that the people with “normal levels of intelligence” referred to in the OHIM Board of Appeal’s test should be interpreted as average traders.

The Court agreed with the OHIM Board of Appeal that Seven Towns’ CTM application did not meet the graphical representation test, as perceived by average traders. The Court held that the reference to seven colours (red, green, blue, orange, yellow, white, and black) and six surfaces would leave most people confused. As well, the description provided at the beginning of this article is not an unambiguous description of a Rubik’s Cube; since the six surfaces are not explicitly described as square, the object described could just as easily be a rectangular prism. Finally, even if the description was unambiguous, it is still a three-dimensional form covered in different colours, which falls squarely into the definition of a figurative mark, rather than a “colour” mark.

While the EU Court of Justice dismissed Seven Towns’ appeal, the massive appeal for its colourful toy has not faltered; in fact, the Rubik’s Cube has been considered by some to be the . Competitions are , in order to determine the fastest time to solve a Rubik’s Cube, with the currently at 5.66 seconds; if OHIM had responded to Seven Towns in a similar timely fashion in 2007, perhaps this whole case could have been avoided.

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.

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Some may find a parallel to the 2002 case of the for use of the trademarked acronym, “WWF”. In that case, both companies were using the same acronym, but operated in vastly different markets – the World Wide Fund for Nature was a charity that solicited donations to support environmental causes, whereas the World Wrestling Federation was a business that organized professional wrestling matches. However, in the “WWF” case, a prior agreement existed between the two organizations regarding the use of the trademark. The English Court of Appeal held that the World Wrestling Federation had violated that agreement, causing the company to change its name to World Wrestling Entertainment, or “WWE”.

In the “BBM” case, no prior agreement existed between BBM Canada and RIM. BBM Canada registered the trademark “BBM” in 2007, in the categories of market research services and advertising services, among others. RIM applied for a trademark of “BBM” in 2009, in association with several services, including marketing and advertising. The Canadian Intellectual Property Office raised a preliminary objection to RIM’s application, on the basis that it might cause confusion with BBM Canada’s trademarks. Nonetheless, RIM continued to use the acronym to promote its BlackBerry products, and as a result, BBM Canada sued RIM.

As mentioned above, BBM Canada claimed that RIM’s use of the acronym “BBM” caused confusion with BBM Canada’s trademark. According to section 6(5) of the federal , factors to consider when looking at confusion include: the extent to which the trademarks have become known, the length of time the trademarks have been in use, the nature of the businesses, the nature of the trade, and the degree of resemblance between the trademarks. Before considering these factors, Justice Near of the Federal Court of Canada deliberated about the appropriate universe of consumers to consider. Justice Near determined that the consumers that would potentially be confused are broadcasting and advertising companies, and not the general public, since the companies are the actual users of BBM Canada’s services.

According to Justice Near, although BBM Canada has used the acronym for longer, RIM’s use of “BBM” was better known. As well, the services offered by each company were sufficiently different, and the consumers of BBM Canada’s services were sufficiently sophisticated, that there was little risk of confusion. Finally, when a trademark is merely an acronym, it is only offered a narrow band of protection within the specific area that the owner of the trademark operates (see ). Due to Justice Near’s finding that RIM’s business was sufficiently different from BBM Canada’s, the allegations regarding confusion failed.

Similarly, there was no evidence that RIM’s use of the acronym “BBM” led to passing off or depreciation of goodwill. In both cases, BBM Canada would have to show that prior goodwill existed in the mind of the public, which it failed to do in this case. Justice Near held that no member of the general public, or the broadcasting community, would see RIM’s advertisements containing the term “BBM”, and be confused whether those services were in some way associated with BBM Canada. Despite Justice Near ruling in RIM’s favour on all claims, the status of RIM’s “BBM” trademark application remains undetermined.

Although RIM may have won this legal battle, BBM Canada could end up having the last laugh. With the option to appeal still available to it, BBM Canada may receive another opportunity to argue its position in court. Even if that fails, RIM’s recent financial woes (see and ) and beg the question: will RIM be around long enough to enjoy the benefit of this legal victory?

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.

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A recently decided U.S. copyright case () could have far-reaching ramifications in the realm of educational copyright. Although it was a decision at the District Court level, which is not binding on U.S. appellate courts or any courts outside of the U.S., Cambridge University Press is a definite victory for higher education institutions. The plaintiffs in the case, three publishing houses, asserted that professors at Georgia State University were violating various copyrights held by the publishing houses on several of the publishing houses’ books. The professors made digital copies of selected chapters of the books available for free to their students, since, in many cases, digital copies of the textbooks were unavailable for licensing from the publishing houses, in whole or in part.

As part of its defense, Georgia State argued that the professors’ use of the excerpts fell under “”, which is a legal way to use copyrighted material without infringing on the copyright. In order to determine whether a use is fair use in the U.S., four factors have to be considered: 1) The purpose and character of the use, 2) The nature of the copyrighted work, 3) How much of the work is being copied, and 4) The effect of the use upon the potential market for, or value of, the copyrighted work.

Since Georgia State is a nonprofit, educational institution, and they were using educational material for the purpose of scholarship and research, the judge found that factors one and two weighed heavily in Georgia State’s favour. Factors three and four depended on the particular claim of infringement. Where a professor copied a small enough portion of the text (there is no determinative factor to determine what qualifies as small enough, but the judge held that 10% of the copyrighted work is a guideline), and the work was not available for licensing in the form desired by the professor (in this case, digital), then factors three and four favoured Georgia State; otherwise, the factors favoured the plaintiffs. Taking all of the factors into account, the judge ruled that Georgia State’s use of copyrighted material fell into the category of fair use in 95 out of the 99 instances initially claimed by the plaintiffs.

Canadian courts might not be as sympathetic to the fair use defense, which goes under the name of “” in Canada. In Alberta (Education) v Access Copyright, the Federal Court of Appeal that when teachers across the country photocopied materials from copyrighted textbooks for their students, they were infringing on copyrights held by members of Access Copyright. The leading Canadian case on fair dealing, , set out the six factors to consider when determining if the use of a copyrighted material is fair dealing: 1) The purpose of the dealing, 2) The characteristics of the dealing, 3) The amount of the dealing, 4) The alternatives to the dealing, 5) The nature of the work, and 6) The effect of the dealing on the market of the copyright owner. As well, the court must determine if the use fell into one of six prescribed categories: research, private study, news reporting, criticism, or review.

One reason for the difference in judgment between the two cases might be the type of dealing: the U.S. case dealt mostly with electronic copies that weren’t commercially available, whereas the Canadian case dealt with photocopies of texts that were commercially available. In Canada, therefore, schools (or students) may be required to purchase entire textbooks, even if they only require a small portion of the book for a particular class. However, despite Access Copyright’s victory at the initial appellate stage, the Supreme Court may still overturn the Federal Court of Appeal’s decision. While the Supreme Court hasn’t yet released its decision, the case was argued in December of 2011, and was reported by IPilogue .

The eventual implications of these cases won’t be felt until the Supreme Court releases its judgment, and until the U.S. case is tried at a higher level. However, if the Federal Court of Appeal decision is upheld by the Supreme Court, then students across the country might expect to see an increase in the cost of education. Instead of receiving free digital or photocopied resources of small portions of a book under the “fair dealing” use of copyrighted material, students will be required to purchase entire textbooks or reference works. Finally, Bill C-11 (covered by IPilogue , , and ), will add education as an allowable category of fair dealing. The Supreme Court is certainly aware of Bill C-11; however, it remains unclear how that knowledge will affect the outcome of this case, and future cases of educational copyright.

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.

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When Apotex began distributing its drug in the United Kingdom, Servier sued it for infringing on Servier's European patent. The European patent covered the particular crystalline form of perindopril erbumine that Servier marketed under the trade mark COVERSYL, and that Apotex was marketing as a generic pharmaceutical. Servier managed to obtain an interim injunction against Apotex, which prevented Apotex from selling their drug in the UK from August 2006 until July 2007. As part of the application for an injunction, Servier submitted a cross-undertaking in damages, stating that it would compensate Apotex if the injunction improperly caused Apotex to lose profits. In July 2007, the English High Court held that , since it lacked novelty. One year later, as a result of Servier's cross-undertaking, since Apotex lost a year's worth of potential profits.

Servier also held a patent on perindopril erbumine in Canada, where Apotex was manufacturing its drug. However, the Federal Court of Appeal in Canada, unlike its counterpart overseas, , and held that Apotex was breaching Servier's patent by manufacturing its drug in Canada. Since the manufacture of the drug was illegal, Servier believed that Apotex should not benefit from its own wrongdoing by receiving damages from Servier. Servier appealed the damage award, citing the legal principle of ex turpi causa non oritur actio, which means that no legal claim shall arise from an illegal or immoral action.

Apotex made several arguments to combat Servier's ex turpi causa claim, including the argument that the ex turpi causa rule only applies to criminal offences, or acts of moral turpitude. The appeal judge rejected Apotex's arguments, and the $17.5 million in damages. However, Apotex appealed yet again, and added an important element to its claim. Apotex conceded that the damages it received should be reduced by an amount proportionate to what a Canadian court would have awarded Servier as a result of Apotex's breach of Servier's Canadian patent.

The case turned for the English Court of Appeal judges on both the application of the ex turpi causa rule, and Apotex's acceptance of a proportionate reduction in the damage award it received. The judges believed that not every legal or moral wrong necessarily deprives the wrongdoer of the ability to apply for a remedy, while relying on the wrongdoing as an element of the claim. The definition of a patent is that the patent holder owns a monopoly on the patented material. Since Servier's European patent was held to be invalid, it turned out that they held an illegitimate monopoly on perindopril erbumine for a time; since that is the case, it seems as though Servier should have been disgorged for their ill-gotten gains, rather than Apotex. The Court of Appeal held that Apotex was merely attempting to challenge Servier's patent, and that Apotex had a reasonably held belief that Servier's patent was invalid. Although Apotex lost its litigation against Servier in Canada, the judges maintained that Apotex's actions fell on the low end of the scale of legal and moral culpability.

As well, the judges felt that Apotex's concession of a reduction in its damage award was a crucial reason to allow Apotex's appeal. By agreeing to reduce the quantum of damages by the amount that a Canadian court would have awarded to Servier, Apotex adequately remedied Servier for Apotex's wrongdoing. Therefore, if there were any damages left over after the reduction, Apotex would not be benefitting from its wrongdoing, so the ex turpi causa rule would not apply. As a result, the .

This case is important for its consideration of conflicting international intellectual property rights, and its consideration of the proper test for the ex turpi causa rule. With regard to both, the English courts appear to have a great deal of deference to Canadian law. It is encouraging to see that level of respect, especially since the Canadian court reached a decision which was the exact opposite of the English court with regard to the validity of Servier's patent. Hopefully, that level of mutual respect can continue between the two countries' judiciaries.

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.

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