UK: IP Snapshot - December 2010

Last Updated: 6 January 2011
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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 opinion

Chronopost 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-443/2010-2

An 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.

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