Bringing you regular news of key developments in intellectual property law
TRADE MARKS
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.
COPYRIGHT
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.
PATENTS
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 www.law-now.com/law-now/mondaq
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.
