UK: IP Snapshot July 2011

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

TRADE MARKS

Case T-318/09 Audi AG and another v OHIM, 6 July 2011

The General Court of the European Union rejected the applicants' appeal against the First Board of Appeal's decision refusing an application for registration of the word mark "TDI" as a CTM. The General Court considered that: (i) the mark TDI was a descriptive acronym (meaning "turbo direct injection" or "turbo diesel injection") which the public concerned would perceive as being a description of motor car vehicles or their components or one of their characteristics (Article 7(1)(3) Community Trade Mark Regulation); and, (ii) it had not been demonstrated that the sign had acquired a distinctive character through use in all Member States of the European Union pursuant to Article 7(3) Community Trade Mark Regulation.

This case highlights that the fact that a mark has been the subject of national and/or international registrations is irrelevant for the purpose of assessing whether it should qualify for registration as a CTM; and that market share statistics are not enough, on their own, to show that a mark has acquired distinctive character through use – there must be other evidence to link market share with the idea that the mark has a distinctive character in the minds of the public concerned.

For the full text of the decision, click here

Schütz (UK) Limited and Schütz GmbH v Delta Containers Limited and Protechna SA, High Court, 5 July 2011

The defendants' actions in replacing original bottles within a branded metal container, in circumstances where the claimants made and distributed a combined container and bottle product, infringed the claimants' trade marks and constituted passing off.

The claimants had already been in dispute in recent patent proceedings over the same issue against another defendant.  The High Court had found that replacement of bottles within the container did not infringe the claimants' patent for a bulk container, whereas the Court of Appeal disagreed and found that the patent for the complete product (cage and bottle) was infringed.  By placing a new bottle in the container, the defendant was completing the patented product (Schütz v Werit, [2011] EWCA Civ 303). As the defendants now cannot replace the bottle due to this patent judgment, this trade mark decision is therefore of relevance only to the time when the patent may have expired or if the Court of Appeal judgment is overturned by the Supreme Court. 

For the full text of the decision, click here

Edwin Co. Ltd v Office for Harmonisation in the Internal Market, Case C-263/09 P, 5 July 2011

The Italian fashion designer Elio Fiorucci enjoyed victory at last on 5 July 2011, when the Court of Justice of the European Union confirmed the General Court's decision that, where national law permits, an individual can prevent the use of his name as a Community trade mark.

An individual's right to a name, as protected under Article 8(3) in Italy, is not restricted to a non-commercial context such as an individual's personality.  The right also includes those names which have already had commercial exploitation.

By contrast, in a previous decision, Elizabeth Emanuel, the Court of Justice of the European Union held that where a person had previously exploited their name commercially, the registration would not become misleading, and therefore revocable, on the grounds that the person was no longer involved in that commercial activity.  This decision may now encourage others whose names are registered as trade marks to revoke such registrations.  However, it will be of concern to assignees of such trade marks, who will understandably consider that, where an assignment includes a trade mark consisting of a personal name, the assignor should be taken as having consented to the continued registration of that name.

For our Law Now of the decision, click here

Mundipharma GmbH v OHIM, Case T-76/09, 22 June 2011

Mundipharma objected to the registration of Farmamundi's figurative CTM, arguing there was a likelihood of confusion with its own figurative CTM. The General Court of the European Union upheld the OHIM Board of Appeal decision in which it stated that there was no likelihood of confusion between the marks under Article 8(1)(b) of the Community trade mark (CTM) Regulation.

The Mundipharma CTM was registered in class 5 for pharmaceutical, sanitary and dietetic goods, whereas the Farmamundi mark was to be registered in class 39 services for storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations.  The Board had ruled (and the General Court agreed) that these goods were not complementary, as the users of the class 39 services would be professionals, while the buyers of the class 5 goods would purchase the goods from pharmacies without any use of class 39 services.
 
This decision shows that there needs to be a sufficient connection between the products for the goods and services to be considered complementary and therefore for a likelihood of confusion to arise.

For the full text of the decision, click here

Future Publishing Ltd v The Edge Interactive Media Inc, Edge Games Inc and Dr Timothy Langdell  [2011] EWHC 1489 (Ch), 13 June 2011

The High Court ruled that the defendants breached an agreement between themselves and the claimant relating to the use of trade marks for EDGE.  The agreement had assigned the EDGE trade marks owned by the defendants to the claimants, however the defendants went on to use three variations of the EDGE logo. Furthermore, the court ruled that the defendants had breached the copyright in the EDGE logo and were liable for passing off as the defendants had been trying to take advantage of EDGE Magazine's goodwill.

An injunction was ordered to stop the defendants from continuing to infringe copyright and the defendants' trade mark was revoked. This case can provide some assurance to clients whose trade marks and copyright is being infringed, particularly where an agreement has been made but not kept.

For the full text of the decision, click here

COPYRIGHT

Vereniging van Educatieve en Wetenschappelijke Auteurs (VEWA) v Belgische Staat, Case C-271/10, 30 June 2011

The Court of Justice of the European Union held that legislation which establishes a system under which the remuneration payable to authors in the event of public lending is calculated exclusively according to the number of borrowers registered with public establishments, on the basis of a flat-rate amount fixed per borrower per year, did not comply with Article 5(1) of Council Directive 92/100/EEC, as it did not take into account the number of works or the number of public establishments lending.

This decision is unlikely to have any effect on the system currently administered by the Public Lending Right Office in the UK, as the remuneration system for public lending is based on the number of times which a particular work is borrowed, but it may result in greater income for copyright owners whose works are borrowed in other EU countries.

For the full text of the decision, click here

Stichting de Thuiskopie v Opus Supplies Deutschland GmbH and others, Case C-462/09, 16 June 2011

National courts are now obliged to find a way to impose copyright levies on those based outside of their jurisdiction. A copyright levy is a tax on the manufacturers or suppliers of devices used by consumers to transfer media; the copyright holders are then compensated with the proceeds of the levy. Certain Member States had introduced a levy where there is a legal right for consumers to transfer media between devices, whereas others had not (where there is no such legal right).

The issue concerned a distance selling situation, where the consumer was based in a country imposing a levy (here, the Netherlands) and the supplier of the device was based in a country not imposing a levy (here, Germany). The Court of Justice of the European Union held that Member States that have a levy must "guarantee" the recovery of the levy for copyright holders. It is therefore for the Member State to seek an interpretation of national law that enables it to obtain the levy from the importing supplier. It is of no bearing that they are established in another Member State.

This case is problematic for those Member States that have introduced a copyright levy, particularly as the Court has not stated how they should enforce the levy where the relevant person is based in a Member State where no levy exists and over which its national courts will have no jurisdiction.

For our Law Now of the decision, click here

PATENTS

1-Click/AMAZON, T 1244/07, 27 January 2011

The Technical Board of Appeal of the European Patent Office has upheld the determination of the Examining Division that Amazon's 'one-click' method was obvious. The patent under examination was entitled 'Method and system for placing a purchase order via a communications network'. It was determined that omitting confirmation steps in the process of placing an order relate to a method of doing business and therefore cannot contribute to inventive step.

This decision shows that a patent construed as a business process, particularly one dependent on user preference (here the user could elect to use the one click ordering system), may be a factor in determining obviousness.

For the full text of the decision, click here

Cephalon Inc and others v Orchid Europe Ltd and another [2011] EWHC 1591 (Pat), 24 June 2011

The High Court has held that three related patents claiming pharmaceutical compositions of modafinil and associated processes were not infringed and were invalid for obviousness.  The critical issue in the determination of infringement was construction of the element of the claims relating to particle size. Floyd J applied a purposive construction, in accordance with Kirin Amgen, based on the common general knowledge of the skilled man and the teaching of the patents, rather than on a strictly verbal analysis of the claims.

The comments on construction, and the weight given to common general knowledge and practices within the industry are interesting.  The summary of the approach to construction is useful, as is the way in which Floyd J formulated the common general knowledge of the skilled person. It is likely some of the principles discussed in relation to construction and obviousness may be useful to other cases.

For the full text of the decision, click here

Nokia Corporation v IPCom GmbH & Co KG [2011] EWHC 1470 (Pat), 16 June 2011

The High Court rejected invalidity attacks on a divisional patent of a parent mobile-phone patent, although the parent had been held invalid in earlier litigation between the same parties. The High Court held that the defendant's patent was valid and Nokia were infringing the patent through the sale of certain mobile phones.

This case demonstrates that just because a parent patent had been held invalid does not mean that the finding of invalidity is easily extendable to a divisional patent.

For the full text of the decision, click here

DESIGNS

Sphere Time v OHIM, Case T-68/10, 14 June 2011

The General Court of the European Union has upheld an OHIM Board of Appeal decision that a design for a watch attached to a lanyard, which was filed in April 2005, was not validly registered under the Community Designs Regulation (6/2002/EC) (CDR). Furthermore, the General Court also ruled that the contested design was not of individual character and thus produced the same overall impression as the SYMBICORT design. Therefore the design was invalid under Article 6 of the CDR.

This case demonstrated that the General Court and the Board of Appeal will consider evidence such as shipping invoices to be sufficient proof that a design had been disclosed to the public before the filing date of the application for the contested design.

For the full text of the decision, click here

DOMAIN NAMES

ICANN vote for creation of new domain suffixes

The Internet Corporation for Assigned Names and Numbers ("ICANN") voted on 20 June 2011 to increase the number of generic top-level domain names (gTLDs). At present there are 22 gTLDs (e.g. .com, .biz, .org), as well as approximately 250 country-level domain names (e.g. .uk, .fr). This vote follows the announcement of the proposal to expand the number of gTLDs in 2008.

Under the new proposal applicants will be able to apply for a domain name suffix comprising almost any word and in any language. The approval is expected to significantly increase the number of domain name suffixes. This will enable organisations to use a script that better reflects the language of their business and it will assist internet users who use a different alphabet to the Latin letters currently used in domain name endings.

For our Law Now 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 28/07/2011.

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