IP Bulletin - April/May 2011

April cases

KEY CASES AND DEVELOPMENTS

• R (on the application of British Telecommunications plc and another) v The Secretary of State for Business, Innovation and Skills, High Court – judicial review of Digital Economy Act. The High Court has rejected the challenge by BT and TalkTalk to the provisions of the Digital Economy Act 2010 by way of judicial review. It did accept one ground of challenge to the order imposing costs-sharing between ISPs and copyright owners. More>>>
• DHL Express (France) SAS v Chronopost SA, ECJ – pan-EU injunction. In a reference from the French courts, the ECJ has followed the Advocate General's opinion and ruled that an injunction and coercive measures issued by a national court under the CTM Regulation have effect throughout the EU. More>>>

PATENTS

High Court – sections 64 and 68 Patents Act 1977

H. Lundbeck A/S v Norpharma SpA and others [2011] EWHC 907 (Pat), Floyd J, 14 April 2011

The High Court has held that a patent for making an anti-depressant drug was obvious over prior art. However, if the patent had been valid, it would have been infringed, although there would have been a partial defence under section 64 of the Patents Act 1977 and limitation of remedies under section 68 of the Patents Act.

Section 64(1) of the Act provides:

1. does in good faith an act which would constitute an infringement of the patent if it were in force, or
2. makes in good faith effective and serious preparations to do such an act,

Section 68 has been amended. In the section as set out below, the words in square brackets were removed and the words in bold added by the Intellectual Property (Enforcement, etc) Regulations 2006 (SI 2006/1028) which came into force on 29 April 2006.

With regard to the section 64 defence, the court held that it was available for processes which had begun to be used before the priority date, although this defence did not extend to importation into the UK after the priority date of the product made by a process not substantially similar to those used before the priority date.

The court referred to the case of Lubrizol Corp. v Esso Petroleum, in which Aldous LJ held that, while the right given by section 64 could not be a right to manufacture any product nor a right to expand into other products, identicality could not be required. He approved the trial judge's statement that, if the protected act had to be exactly the same as the prior act, then the protection given by the section would be illusory. The section was intended to give a practical protection to enable a person to continue doing what, in substance, they were doing before.

Section 68 applied because the registration of the assignment of the patent with the EPO was not deemed to be a registration in the UK under the Patents Act, and it would have been practicable to register the assignment in time.

In Siemens v Thorn, Mann J held that the unamended version of section 68 applies to acts of infringement committed before the section was amended, and this holding was not raised in the appeal. On this basis, the patentee would not, if the patent had been infringed, have recovered damages or an account of profits for infringements before 29 April 2006, nor costs thereafter.

Advocate General Opinion - questions on SPC referred by Court of Appeal Generics (UK) Ltd v Synaptech Inc, C-427/09, 31 March 2011 Advocate General Mengozzi has given his opinion on questions relating to the interpretation of the SPC Regulation referred by the Court of Appeal.

This case was heard at the same time as the case of Synthon v Merz Pharma – see report above. The questions were very similar and the Advocate General has recommended the same approach in both cases.

European Commission - regulations for Community patent Proposal for a Regulation on enhanced co-operation for creating unitary patent protection http://ec.europa.eu/internal_market/indprop/docs/patent/20110413-proposal enhanced-cooperation_en.pdf and Proposal for a Regulation on enhanced cooperation for creating unitary patent protection (translation arrangements), 13 April 2011 http://ec.europa.eu/internal_market/indprop/docs/patent/20110413-proposaltranslation- arrangements_en.pdf

The European Commission has published two proposals for regulations for a unified EU patent. Following acceptance by the Council and Parliament of the European Commission's proposal for initiating an enhanced co-operation regime for a unified EU patent, the Commission has now published two proposals for regulations.

The first of these deals with the creation of unitary patent protection. This is to be provided through the existing arrangements for European patents granted through the EPO.

The second regulation deal with the translation arrangements, which are essentially those currently in use for European patents. The exception is that there would be no need for the owner of a unitary patent to have the granted patent translated into any other language unless the patent were to be asserted against an infringer. In such a situation, a translation into the official language of the member state in which the alleged infringement took place or where the defendant was domiciled must be provided.

TRADE MARKS

ECJ – pan-EU injunction DHL Express (France) SAS v Chronopost SA, Case C-235/09, 12 April 2011

In a reference from the French courts, the ECJ has followed the Advocate General's opinion and ruled that an injunction and coercive measures issued by a national court under the CTM Regulation have effect throughout the EU.

Chronopost SA brought proceedings in France against DHL Express (France) SAS for infringement of its French and Community trade mark "WEBSHIPPING", based on DHL's use of that word to designate an express mail management service accessible via the internet.

The Paris appeal Court of Cessation made a reference to the Court of Justice for a preliminary ruling in order to ascertain, in essence, the territorial scope of the prohibition issued by a Community trade mark court and of the coercive measures adopted in order to ensure that that prohibition is complied with.

In his Opinion, the Advocate General considered that, in principle, 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 European Union.

The AG went on to note that where the infringement was limited to a specific geographical or linguistic area, the court's order could be limited to such an area, but this was for the defendant to establish.

The ECJ has followed the Advocate General's opinion and ruled that an injunction and coercive measures issued by a national court under the CTM Regulation have effect throughout the EU.

Patents County Court – YELLOW PAGES infringement and passing off Yell Ltd v Louis Giboin and others, [2011] EWPCC 009, HHJ Colin Birss QC, 4 April 2011

The Patents County Court has held that Yell's YELLOW PAGES trade marks have been infringed and passed off.

Yell, the claimant, was the proprietor of a UK registered trade mark for YELLOW PAGES registered in class 35 for advertising and other services, and the following UK figurative mark in a number of classes.

The defendants had a website from which they operated a database including a directory of transport businesses and classified adverts. They used the following sign:

Yell issued proceedings for trade mark infringement and passing off. The defendants did not deny that they used Yell's trade marks but argued that their websites were not UKbased and were therefore outside the court's jurisdiction. They also argued that Yell's trade marks were not distinctive on the internet because they were used all over the world in relation to directories which had nothing to do with Yell.

The court held that the defendants' websites infringed and passed off Yell's YELLOW PAGES word mark and logo.

The court said that the average consumers of the defendants' services within the UK would regard the websites as being directed at them: the services could be bought in the UK and were being supplied in the UK.

The court held that there was trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994. The court said that the addition of "transport" to the defendants' sign would not go unnoticed by the average consumer, so the marks were not identical and there was no infringement under section 10(1).

In relation to passing off, the court said that although Yell's marks were associated with a paper directory service, the UK public associated them with a UK directory service however it was delivered, including over the internet, and the court rejected the defendants' argument that Yell's marks were generic on the internet.

IPO - Tribunal Practice Notice on Partial Refusal

TPN 1/2011, 6 April 2011

The IPO has announced that this practice notice replaces PAN 14/06 & TPN 2/2006 and takes into account the latest guidance from the courts in respect of the issue of partial refusals, and in particular, the guidance of Mann J in Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch).

The practice notice concerns the pre-publication examination of, the post-publication opposition to, and the post registration invalidation or revocation of trade marks. It sets out the Registrar's practice where grounds for refusal of an application exist for some of the goods/services covered by the trade mark, but not others.

This practice amendment comes into effect immediately and affects all applications for registration (i.e. those currently examined and those under opposition/cancellation). It applies to domestic trade mark applications and to international trade mark registrations examined or challenged under national law.

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