Bringing you regular news of key developments in intellectual
property law.
TRADE MARKS
The Olympics, Paralympics and London Olympics Association Rights (Infringement Proceedings) Regulations 2010, SI 2010 no. 2477.
These Regulations provide for the High Court to make orders
concerning goods infringing the London Olympics association right,
which arises from the London Olympic and Paralympic Games Act 2006.
The Regulations also make amendment to the Olympic Association
Right (Infringement Proceedings) Regulations 1995 which concern
enforcement of the Olympics Association Right (arising from the
Olympic Symbol etc. (Protection) Act 1995) in order to ensure that
the 1995 Regulations apply to the Paralympic Games.
For the full text of the regulations, click
here
(1) Och-Ziff Management Europe Ltd (2) OZ Management LP v
(1) OCH Capital LLP (2) Union Investment Management Ltd (3) Thomas
Tadeus Antoni Ochocki [2010] EWHC 2599 (Ch) (High
Court)
The Claimants' dispute related to a Community Trade Mark (CTM) for OCH-ZIFF and the use by the Defendant, OCH Capital, under the marks "OCH" and "OCH CAPITAL". This case is the first to specifically endorse the doctrine of initial interest confusion and confirm that a trade mark can be infringed under Article 9(1)(b) (likelihood of confusion) even where by the time of purchase the consumer is no longer confused as to the origin of the goods and services.
For our full Law-Now on this important decision, click here
For the full text of the decision, click here
Strategi Group Ltd v OHIM, Case T-92/09
The EU General Court upheld an OHIM Board of Appeal decision
that the publisher of the magazine Strategies and the owner of the
work mark STRATEGIÉS (registered in France for a number of
goods and services) was entitled to rely on its use of its mark as
a magazine title in opposition proceedings to an application to
register the word mark STRATEGI as a CTM in Class 35. The court
ruled that the appeal board was right to hold that a magazine title
could constitute a valid use of a trade mark, provided that the
services in question were provided through the magazine.
For the full text of the decision, click here
DHL Express (France) SAS v Chronopost SA
Case C-235/09, Advocate General's
opinionChronopost brought trade mark infringement proceedings against
DHL before the French court in respect of the word
"WEBSHIPPING". It was held that there had been trade mark
infringement and the court made an order prohibiting DHL from
continuing with the infringing acts in France. It was referred to
the ECJ to ascertain the territorial scope of the prohibition and
the supporting penalty payment. The Attorney General considered
that a prohibition issued by a national court acting as a Community
trade mark court has effect as a matter of law throughout the
entire area of the EU. However, where the infringement or action
for infringement is limited to a specific geographical or
linguistic area, the court's order is limited
territorially.
For the full text of the press release, click here
Sony Ericsson Mobile Communications AB v
OHIM
Case R-443/2010-2An OHIM Board of Appeal allowed an appeal by Sony Ericsson against the decision that a movement mark was not eligible for registration as it was not graphically represented. Probably the most interesting aspect of this appeal was the willingness of the board to take into consideration previous successful movement marks. However, this may change as more movement marks are registered over time.
For the full text of the decision, click here.
Lidl SNC v Vierzon Distribution SA (Case 159/09)
The European Court of Justice has ruled that a retailer's
use of comparative advertising to highlight price differences
between its goods and those of its competitor may not be
misleading, even though the products being compared are not
identical. The decision concerns the interpretation of European
Directive 84/450/EEC (the "Directive"), following a
referral to the ECJ by the French national court.
For the full text of the decision, click here
COPYRIGHT
Padawan SL v Sociedad General de Autores y Editores
(SGAE)
Case C-467/08
The ECJ have answered a number of questions on the interpretation
of Article 5(2)(b) of the Copyright Directive which allows Member
States to provide for an exception to Article 2 where a
reproduction is made by a natural person for private use.
Here, the ECJ held that the indiscriminate application of a private
copying levy to all types of digital reproduction equipments,
devices and media is incompatible with the Copyright Directive.
Private copying levies should not be charged on goods sold to
businesses.
For the full text of the decision, click here
Paul Gregory Allen (acting as trustee of Adrian Jacobs
(deceased) v (1) Bloomsbury Publishing plc (2) Joanne Kathleen
Murray (professionally known as JK Rowling) [2010] EWHV 2560
(Ch)
The High Court has refused to grant JK Rowling and her publishers
summary judgment on a copyright infringement claim made against
them in relation to Harry Potter and the Goblet of Fire, which was
alleged to have copied aspects of the plot and themes of a book
called Willy the Wizard, written by Adrian Jacobs.
For the full text of the decision, click here
Crosstown Music Company 1 LLC v Rive Droite Music Ltd and
others [2010] EWCA Civ 1222
The Court of Appeal has upheld the decision of the High Court in
finding that a clause in a songwriting agreement, which provided
for an automatic reversion of copyright to the songwriter in the
event of a breach of contract by the other party, was valid. There
is no statutory or common law authority which states that such
clauses are incompatible with the partial nature of the assignments
of copyright permitted under section 90 of the Copyright, Designs
and Patents Act 1988.
For the full text of the decision, click here
Charities' exemption under the CDPA 1988 to be
repealed
From 1 January 2011, charities and not-for profit organisations who use recorded music will require a licence from Phonographic Performance Ltd (PPL), a UK collecting society for performers and record companies, and PRS for Music (formerly the Performing Rights Society).
The Newspaper Licensing Agency Ltd and others v
Meltwater Holding BV and others [2010] EWHC 3099
(Ch)
In this case, the High Court ruled that the end users of an online
news-monitoring service needed a web end-user licence from the
Newspaper Licensing Agency Ltd, as without one they were infringing
newspaper publishers' copyright. It also confirms that
copyright subsists in a newspaper headline.
For the full text of the decision, click here
PATENTS
EPO Decision T-0784/06, 3 March 2008, Beckman Coulter
Inc
In this case, the EPO Board of Appeal extracted the legal
principles from decision G3/08 of the Enlarged Board of Appeal, and
applied those principles to a case in the biotechnology
sector.
Although the patent in question related to subject matter in the
biotechnology sector, it was also essentially a mathematical
process. The Board of Appeal held that it was not excluded from
patentability as a mathematical method "as such", but
that the application failed for lack of inventive step.
The case is noteworthy as it shows how the EPO's policy of
"the raising of the bar" (perhaps on the back of G3/08,
which was widely regarded as a weak decision) may be causing a more
stringent approach to be taken.
For the full text of the decision, click here
Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott
(t/a Scotts Potato Machinery) [2010] EWCA Civ
1110
The Court of Appeal has held that a patent for a potato-harvesting
machine was wholly valid. The decision is particularly interesting
regarding contributory infringement under s.60(2) Patents Act 1977,
holding that the intention to put the invention into effect need
not be the intention of any specific person. The issue to consider
is whether the "means" and the circumstances on which it
was offered/supplied were such that at least some ultimate users
would intend to use or adapt the "means" so as to
infringe.
This decision will make it harder for alleged contributory
infringers to escape liability, particularly where they have made
it easy for the end-user to modify the item so that it directly
infringes. The comments on the importance of foreign decisions are
a clear warning to lawyers that research should not be limited to
UK case law.
For the full text of the decision, click here
Alk-Abello Limited v (1) Meridian Medical Technologies (2)
Dey Pharma LP [2010] EWPCC 14
New rules for the Patents County Court (PCC) came into effect on 1
October 2010. While previous guidance existed on determining
transfers between the PCC and the High Court, the PCC took the
first application for such a transfer since the new rules came into
effect as an opportunity to set out new guidance on transfers.
For the full text of the decision, click here
Dame Vivienne Westwood v Anthony Edward Knight [2010] EWPCC 16
New rules for streamlining procedures at the Patents County Court (PCC) came into effect on 1 October 2010. This case was the first case management conference to be held under the new procedures and is an illustration of how the PCC will take a more active role in case management, giving directions which restrict both issues to be considered and evidence which could be served.
For the full text of the decision, click here
KCI Licensing v Smith & Nephew [2010] EWCA Civ
1260
The Court of Appeal has allowed some of the grounds of appeal from
the High Court decision on the infringement and validity of two
patents relating to a system for assisting wound-healing. In the
High Court Justice Arnold held that both patents were valid and
that all but one of the acts complained of constituted contributory
infringement under section 60(2) Patents Act 1977 ("PA").
The Court of Appeal construed the claims of the First Patent
differently to the trial judge and held that Smith & Nephew
(S&N) did not infringe. Regarding claim construction, the Court
of Appeal also differed from the trial judge in relation to the
validity of one of the asserted claims of the Second Patent,
holding it was invalid for a lack of inventive step. The Court of
Appeal applied the judgment from Grimme v Scott earlier this year
regarding section 60(2) PA, and held that Justice Arnold had
applied the wrong test of contributory infringement, and that
therefore S&N had infringed the claim of the second patent for
which the Court had upheld the finding of validity.
For the full text of the decision, click here
Cephalon Inc & others v Orchid Europe Ltd and Generics
(UK) Ltd
High Court
The High Court refused an interim injunction in an action for
patent infringement brought by Cephalon and licensees relating to
patents for a narcolepsy drug, against the manufacturer and the
European distributor of a generic. Instead a speedy trial was
ordered for April 2011. There was a serious issue to be tried,
despite the evidence of infringement being weak. However, the
defendant had the stronger arguments on balance of convenience. The
market for the drug was relatively mature and it would be possible
to assess the claimants' lost profits if an injunction were
refused. However, if an injunction were granted, there was no way
of assessing how much of the market the defendants would lose. The
evidence established that loss to the defendants was more likely to
occur, more likely to be substantial and would be more difficult to
quantify.
For the full text of the decision, click here
DATABASE RIGHTS
Beechwood House Publishing Ltd v Guardian Products Ltd
and another [2010] EWPCC 12
The Patents County Court refused to grant summary judgment for a
claim of infringement of database rights because the claimant
failed to provide sufficient evidence to demonstrate how much data
the defendants had extracted from the claimant's database,
hence it was not able to be considered a "substantial"
extraction.
For the full text of the decision, click here
Football Dataco Limited and others v Sportradar GmbH and
another [2010] EWHC 2911 (Ch)
This case held that the English court had jurisdiction to consider
various heads of claim relating to copyright and database right
infringement where the defendants were based outside the UK and had
made allegedly infringing material available online from servers
also based outside of the UK. Re-utilisation of database content
occurs where the data-containing server is based, rather than where
the data is downloaded from the internet.
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 23/12/2010.