UK: IP Snapshot April 2011

Last Updated: 3 May 2011
Article by Nick Beckett, Lucy Kilshaw and Tom Scourfield

Bringing you regular news of key developments in intellectual property law.

COPYRIGHT

Advocate General's Opinion on Painer v Standard Verlags GmbH, Case-145/10, 12 April 2011

A portrait photo is afforded copyright protection under Article 6 of Directive 93/98 and of Directive 2006/116 if it is an original work resulting from the intellectual creation of the photographer, which is the case where the photographer 'leaves his mark'. The publication of a photo-fit based on a copyright portrait photo constitutes a reproduction within the meaning of Article 2(a) of Directive 2001/29 where the elements comprising the original intellectual creation of the template are also embodied in the photo-fit.

Quotations without consent are permissible but the person making the quotation must credit the author where possible, having taken all measures to identify the author having regard to the circumstances of the individual case.

A slightly modified criterion should be applied in examining whether there is a sufficient close connection for Article 6(1) of the Brussels Regulation regarding jurisdiction for related actions.

For the full text of the opinion, click here

TRADE MARKS

In the matter of application no 2463230 in the name of Catherine Hughes and opposition no 96672 by Annette Campbell and Bente Zaber, BL O-094-11 (UK IPO), 7 March 2011

An application for registration of the name of the deceased well-known voice trainer IAN ADAMS was refused on the grounds of bad faith as it was made for an improper purpose, where the Applicant was seeking to exclude the surviving goodwill and reputation of the name from the estate she was purporting to administer.

For the full text of the decision, click here.

Dame Vivienne Westwood OBE v Anthony Edward Knight [2011] EWPCC 008 (Patents County Court), 22 March 2011

This case, the first to be heard in the Patents County Court under the new procedural scheme applicable in this court (which came into force in October 2010), concerned claims of trade mark and copyright infringement, and passing off brought by Dame Vivienne Westwood against Mr Anthony Knight (an online seller of fashion clothing and accessories). The dispute related to the sale of fashion clothing and accessories bearing various names and marks associated with Dame Westwood.

The court upheld these claims. 

For the full text of the decision, click here.

Advocate General's Opinion on Case C-323/09 Interflora Inc v Marks and Spencer plc, 24 March 2011

The Advocate General has delivered an opinion on the questions referred to it by the High Court and has opined that trade mark infringement is possible where the use of the trade mark in question is via an advertising keyword (AdWord) purchased by a third party.

Typing in the keyword (and trade mark) INTERFLORA as a search term in Google generated a sponsored link to M&S' online flower-delivery service. The Advocate General held that in general the display of commercial alternatives in this way is not problematic as there would be little confusion for the average internet consumer. However, the risk with the INTERFLORA trade mark was that the average internet consumer may associate M&S with the network of independent businesses that Interflora comprises. Therefore the proprietor of such a trade mark would be entitled to prohibit the use of such a keyword in advertising by a competitor.

For the full text of the opinion, click here

Yell Limited -v- Louis Giboin and others, Patents County Court, 4 April 2011

Yell sued an individual and his associated companies whose websites depicted the YELLOW PAGES mark and the "Walking Fingers" logo, which were used to promote an online directory of transport related businesses.  The defendant argued that his websites were based outside the UK, so that the UK courts had no jurisdiction and also that Yell's marks were used generically over the internet by third parties (but no formal counterclaim for invalidity was made).  These arguments were rejected and Yell succeeded on claims of trade mark infringement and passing off.

For the full text of the decision, click here

PATENTS

Oliver Brüstle v Greenpeace eV, C-34/10, 10 March 2011

The Advocate General has published an opinion concerning the interpretation of certain terms contained in Directive 98/44/EC, the "Biotech Directive".  In particular the opinion focussed on interpretation of the term "human embryo".  The AG considered that totipotent cells, those which have the capacity to evolve into complete human beings, as well as cells at the blastocyst stage of development, must be classified as human embryos and are therefore not patentable.  In addition, procedures using pluripotent embryonic stem cells that necessitate destruction or modification of an embryo would not be patentable.

For the full text of the opinion, click here

For our Law-Now on this opinion, click here.

The Hedgehog Golf Company Ltd v Frank Hauser [2011] EWHC 689 (Ch), 23 March 2011

Mr Justice Newey of the Chancery Court has granted a perpetual injunction to The Hedgehog Golf Company Ltd to restrain a former director, Mr Frank Hauser, from improperly disclosing confidential information (including in relation to a patent). The Defendant had shown a "blatant disregard" for an existing Company director's rights and had revealed an intention to destroy or damage the company including an intention to assist a party with which the Company was engaged in litigation.

For the full text of the decision, click here.

Les Laboratoires Servier and another v Apotex Inc and others [2011] EWHC 730 (Pat), 29 March 2011

The High Court has held that a defendant must repay damages paid to it resulting from a cross-undertaking in the context of an interim injunction which was deemed to have been incorrectly granted.  This repayment decision is due to the fact that the manufacture of the original product was found to infringe a foreign patent, and so while the UK patent was not being infringed, the principle of ex turpi causa applies. The meaning of ex turpi causa was considered in depth and found to include situations where there was no actual dishonesty or crime, but rather a seriously unlawful act undertaken with relevant knowledge.

For the full text of the decision, click here.

(1) Gemstar-TV Guide International Inc. (2) Starsight Telecast Inc. (3) United Video Properties Inc. v (1) Virgin Media Limited (2) Virgin Media Payments Limited [2011] EWCA Civ 302, 29 March 2011

Users of Virgin's electronic programming guide (EPG) could display programme information in a manner, which according to Gemstar infringed its Single Channel Patent.  The mechanism for arriving at favourite channels allegedly infringed Gemstar's Favourite Channel Patent and the mechanism for secondary recording allegedly infringed the Transfer Patent.  Virgin disputed the infringement and counterclaimed that the patents should be revoked in view of non-patentable subject matter, lack of novelty and being obvious over the prior art. 

The High Court revoked all three patents for lack of novelty. Gemstar appealed against the revocation of two of the patents, the Transfer Patent and the Favourites Patent, arguing that both were novel over the cited prior art. The appeal was dismissed.

For the full text of the decision, click here.

Synthon BV v Merz Pharma GmbH & Co KG, C-195/09, 31 March 2011 and Generics (UK) Ltd v Synaptech Inc C-427/09, 31 March 2011

The Advocate General has given his opinion on the interpretation of the Supplementary Protection Certificate (SPC) Regulation in 2 cases – Synthon v Merz and Generics v Synaptech – the cases were not joined but concern similar aspects of the SPC Regulation.  The cases concern the meaning of the term "first authorisation to place the product on the market".  Advocate General Mengozzi opined that products which had been placed on the market as medicinal products in Community territory before a marketing authorisation in compliance with Directive 65/65 (the "Medicines Directive", now 2001/83) had been obtained did not fall within the scope of the SPC Regulation and so the related SPC was invalid.

For the full text of the opinions, click here and 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 27/04/2011.

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