UK: IP Snapshot - October 2010

Last Updated: 1 November 2010
Article by Nick Beckett, Isabel Davies and Tom Scourfield

Bringing you regular news of key developments in intellectual property law


Travel Services a.s. v OHIM, General Court, Case T-72/08, 13 September 2010  

The General Court confirmed the OHIM Board of Appeal's decision in its finding that there was a likelihood of confusion between an application for a device mark incorporating the word SMARTWINGS and various earlier word and device marks for EUROWINGS for goods and services related to aviation.  WINGS was the dominant element, despite being, arguably, of weak distinctive character. 

For the full text of the decision, click here

Procter and Gamble Company v OHIM, General Court, Case T-366/07, 13 September 2010

The General Court overturned the OHIM Board of Appeal in its finding that there was no likelihood of confusion between P & G PRESTIGE BEAUTE as a word mark and prior Italian marks consisting of the word PRESTIGE in special script.  

For the full text of the decision, click here.

Lego Juris A/S v OHIM and MEGA Brands, Inc, Case C-48/09 P, 14 September 2010

This case concerned the validity of a trademark consisting of a three-dimensional shape. The EU General Court had held that the trademark consisted exclusively of the shape of goods that was necessary to obtain a technical result, and was therefore invalid under Article 7(1)(e)(ii) of the CTM Regulation. The claimant's subsequent appeal to the ECJ was dismissed as unfounded due to the fulfilment of the conditions of Article 7(1)(e)(ii).

For the full text of the decision click here

OHIM v Borco-Marken-Import Matthiesen, Case 265/09 P,  9 September 2010

This case relates to the ongoing dispute that arose from the examiner refusing an application for a Community trade mark in respect to the letter 'α' (alpha, the Greek for 'a') for 'alcoholic beverages (except beers), wines, sparkling wines and beverages containing wine' in Class 33. The examiner refused the application on the grounds that the letter did not have a distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation. The decision was appealed and the latest appeal to European Court of Justice (First Chamber) by OHIM has now been rejected.

For the full text of the decision, click here

Bayerischer Brauerbund eV v Bavaria NV, Case C-120/08, 16 September 2010

This case relates to an opinion given by the Advocate General, clarifying the relevant date for the purposes of priority of a protected geographical indication (PGI) or designation of origin (PDO) over later trade mark applications, where a PDO/PGI was granted without prior publication. His view was that the relevant date was the date that registration of the PGI/PDO was published.

For the full text of the decision, click here

Diageo North America, Inc and another v Intercontinental Brands (ICB) Ltd and Others [2010] EWCA Civ 920

The Court of Appeal has upheld the previous High Court decision that the defendant's product, VODKAT, had been unlawfully passed off as vodka. This case concerns the extended form of passing off, which has developed as a result of actions by classes of traders who share the collective goodwill in a type of product. The Court of Appeal found that, although premium brands were perhaps more likely to acquire the required distinctiveness to fall within the remit of extended passing off, goodwill can attach to a product because consumers value it for its qualities rather than its status.

For the full text of the decision, click here


SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch)

Arnold J in the High Court has referred a number of questions to the ECJ on the interpretation of the Software Directive and the Copyright Directive. At first instance, this decision appears to be a significant victory for new entrants to the software industry who wish to challenge the existing players. However, the decision of the ECJ is still pending.

For the full text of the decision, click here. For our Law-Now on this decision, click here.


Rule Changes at the Patent County Court

A number of changes have been made to the rules of the Patent County Court which came into effect on 1st October 2010. The main changes relate to the streamlining of procedures, cost capping and the appointment of a new judge. These changes are mainly designed for SMEs and small litigants, and may encourage more litigation by such entities at PCC level.

To see the updated rules, click here

Decision of the Hearing Officer – Dell Products LP (BL 0/321/10), 16 September 2010

This decision concerns the exclusion to patentability set out in A52(2)(3) of the European Patent Convention, and in particular, the test applied to determine whether the alleged invention is within the boundary or outside it. Under the exclusion, subject-matter relating to business methods or computer programs per se is not patentable.

The EPO's Board of Appeal has supported the "further technical effect" test, whereas in the Symbian case, the Court of Appeal confirmed the "contribution" test. These two tests are not identical and could lead to different decisions.

Dell had applied for a patent for a system and method related to the replacement of legacy information. The examiner had refused an application for a patent on the grounds that the subject-matter was excluded. Dell appealed, arguing that the UKIPO should now adopt EPO case law, because (i) according to G3/08 this case law is now settled and (ii) the Court of Appeal judgment in Symbian had ruled that the contribution approach was not to be an exclusive test. The hearing officer disagreed stating that only the Court of Appeal could decide if EPO case law was settled and they had never done so. The UKIPO was therefore obliged to use the "contribution" test in Symbian.

For the full text of the decision, click here.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 29/10/2010.

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