Examination of witnesses (Questions 414
TUESDAY 11 MAY 1999
MR R WESTON
and MR A SERJEANT
414. Good morning, may I welcome you here. You
represent patent agents. Perhaps we could start with the Silhouette
case which has become something either of a cause celebre
or a benchmark; I am not quite sure which is the appropriate metaphor
to apply. Do you think it is feasible to discuss exhaustion of
trademarks separately from discussing exhaustion of other rightspatent,
copyright, design, etcetera? If international exhaustion is to
apply, should it not apply to all forms of intellectual property
(Mr Weston) In principle, yes. It is just that items
of trademarks, copyrights or designs are much easier to recognise
as being counterfeit, copy or parallel import, whereas patents
tend to be, as in our written evidence, usually how things work,
how things operate or are formulated or constituted. It is more
difficult to detect and establish that there is copying taking
place or generally to monitor the information. In principle, yes,
all items of IP are effective. In this country on counterfeit
goods, trademarks and copyright and design rights are enforced
because they are items of IP which are more readily applied by
the courts, but I understand for example in Germany patent infringement
is the preferred course of action because that is the better way
to get enforcement in those courts. Even within the European Union,
the varying national jurisdictions which are still established
choose as to which is the most appropriate form of intellectual
property the owner would wish to use to enforce or control what
is being marketed in their country.
415. Looking through the evidence you provided
to us, you have not come out with an opinion on whether parallel
importing from outside the EEA should be allowed. You might perhaps
want to stand back a little from being specific on it but can
you give the Committee some indication of the problems your members
would face if the current regime were to be changed and parallel
importing from outside the EEA were permitted?
(Mr Weston) The classic answer to that is: on which
side of the fence am I sitting today? We have the whole gamut
of clientele we have to represent. It goes from the multinational
branded force at one end to the parallel importer the other side.
We have to make certain that we deal with the law either as it
stands or as it will be changed, to make certain that our clients
are represented and their interests are covered as well as possible.
It has to be remembered that in the current regime we are talking
about importation control, it is restricted to intellectual property.
Intellectual property is there, is a right, but there are two
sides to the question: whether that intellectual property item
has been infringed or not; second, whether it is a valid item
of intellectual property in the first place. You talked about
items such as Silhouette, Colgate, Shield, where there are unquestionably
trademark rights or get-up rights because these are the very clear
items. In other areas first of all you have to establish whether
there is enforceable intellectual property relative to this item.
That being so you then have to determine whether or not that right
has been infringed. It gets more complex, especially with regard
to patents, than perhaps with regard to trademarks and copyright.
For example, in the recent EC directive on free zoning, the way
they have treated trademarks there is that they have said that
in this area if a mark is identical to the alleged infringement
you can go in because this is a question of copying, whereas for
patents they just say if there is an infringement. Determining
infringement of a patent is a far more diffuse, grey area than
some items of trademark infringement. There are other items of
trademark infringement which are equally difficult to determine
but these have been taken out of this particular bit of EC regulation.
Yes, I am a fence-sitter, but I have to represent my client whichever
way it is. Although we will go individually, we have personal
416. Fine. You have reinforced the fact that
you did not come out in the first instance with a clear opinion
and I understand the position you are in. What would your view
be on the suggestion that there should be global exhaustion of
rights with certain sectors exempted, for example pharmaceuticals?
What problems would arise for your members if this did occur?
(Mr Weston) No more or less than the problems we have
at the moment. It would just be a different law coming into force
which has to be dealt with in a different way. We live in a milieu
of constantly changing IP laws anyway in this country, within
the European Union, worldwide. It is something else where we would
have to develop our expertise, the jurisprudence and take on board.
I would like to add, dealing with regional exhaustion of rights
and worldwide, that this country has signed up to TRIPs and the
Uruguay round of TRIPs and the view has been put within the committee
I represent of the Chartered Institute that yes, we should proceed
with that and TRIPs does not prohibit worldwide exhaustion of
rights. If that is the way it is, that is what we do with it.
The current situation with Silhouette and the enforcement of the
laws there which is going on now has regional exhaustion. Certain
members of my Institute are advising the importers and other ones
are involved in the cases against them. We are trained and we
have to look at both sides of the question.
417. What are the main problems which your members
face under the current regime?
(Mr Serjeant) As members we do not face any problems.
It is our job to adapt to the circumstances, to adapt to the law
and to the facts. We are no different from any other member of
the public in that respect.
418. Is the law clear? Do the people whom you
represent know where they stand even when they get the advice
(Mr Weston) The answer to that is no.
419. So the law is not clear then.
(Mr Weston) The law is never clear. Clients want certainty,
commercial certainty. Can I sell this, can I not sell this? They
quite rightly wish for certainty and we have to give a classic
lawyer's answer of ifs, buts and maybes and come down to conclusion
one way or another on the fact of that particular case on the
information in front of us. We are a form of lawyer, so we have
to balance questions. There are areas where commercial certainty
could be improved to the benefit of our profession and to the
benefit of all the clients we advise, for example, in trying to
get a pan-European or pan-European Union enforceability of IP
rights. We have the Community trademark in force, we have the
Community patent being proposed and it would be very nice if we
could have a single court of first instance to try for infringement
rights as well as for validity. There is the famous EpiLady case.
You may remember the EpiLady which was a torturous instrument
which was supposed to pluck out hairs from your legs and other
parts of the body. It was basically an Israeli invention for which
there was a European patent. The European patent was that the
EpiLady device itself had a spring with a loop in it which was
twisted round at high speed so the coils of the spring opened
and closed and had a tweezer action. So it was like not one tweezer
but a multitude of tweezers ripping hairs out of your legs. I
remember I bought it for my wife and she had one go at it and
she thought I was trying to get instant divorce proceedings. A
European patent was granted for this and the European patent means
it is the identical patent with the identical claims, granted
and then burgeons out into a series of national rights. Remington
thought it was a good idea and that they would do a complementary
device, not an identical copy. They looked at it and instead of
having a spring, they had a rod with a whole series of little
disks in them. When the rod was bent the disks would come together,
come apart and have the same tweezer action. The claim recited
a spring. Infringement proceedings were brought by EpiLady against
Remington in the United Kingdom and in Germany. On the identically
worded claim no infringement was found in the United Kingdom because
the claim said a spring and the alleged infringement had a disk
with rods on. An infringement was found in the German courts because
they said the action was the same, the underlying thought or invention
behind the claim was the same. This is because over the years
German practice with regard to claims and continental practice
with regard to claims is different from the common law countries.
However, in the IP area we are being forced to harmonise more
and more and initially the harmonisation has been in the area
of obtaining the right and assessing the validity of the right
but the actual enforcement of the right, infringement of the right,
has been left to national interpretation and national jurisdictions.