TRADE MARKS
Specsavers International Healthcare Ltd and others v
Asda Stores Ltd [2012] EWCA Civ 24, 31 January 2012
The Court of Appeal has partially overturned a
decision of the High Court, finding that a marketing campaign by
Asda, targeted at customers of Specsavers, infringed
Specsavers' word and logo marks. In doing so, the Court of
Appeal has referred a number of questions to the Court of Justice
of the European Union (CJEU). Such questions particularly relate to
the validity of wordless marks when used only in conjunction with a
separate word mark.
For our full Law-Now of this important decision, click here
Wintersteiger AG v Products 4U Sondermaschinenbau GmbH
C-523/10, 16 February 2012
The Advocate General has provided his opinion on the
interpretation of Article 5(3) of Regulation 44/2001 in the context
of trade mark infringement through the use of AdWords, stating:
"Where conduct occurs via the internet which is liable to
infringe a national trade mark registered in a Member State,
Article 5(3) of Regulation 44/2001 must be interpreted as meaning
that it attributes jurisdiction to the courts of the Member State
in which the trade mark is registered and to the courts of the
Member State where the means necessary to produce an actual
infringement of a trade mark registered in another Member State are
used."
The Advocate General noted that in order to assess the location
where the damage occurs and where the event giving rise to the
damage takes place it is necessary (1) to establish that
"there are objective elements which enable the
identification of conduct which is in itself intended to have an
extraterritorial dimension" - these elements include the
language used, the accessibility of the information and whether the
defendant operates commercially in the jurisdiction where the mark
is registered; and (2) to consider the territorial scope of the
dissemination of the information - the top-level domain, the
location data supplied on the website and location of the
information providers business will all be relevant.
For the full text of the decision, click here
Helena Rubinstein SNC and another v OHIM, Case
C-100/11P, Advocate General's Opinion, 16 February
2012
The Advocate General has recommended that appeals brought by Helena Rubinstein and L'Oreal against both General Court and OHIM Board of Appeal decisions to grant the owner of the BOTOX brand a declaration of invalidity against their registered word marks BOTOLIST and BOTOCYL should be rejected. The Advocate General's opinion agrees with the previous findings that the later marks were detrimental to the distinctive character or repute of the earlier mark and took unfair advantage of it. The Advocate General took the view that the General Court had not made any mistakes in assessing the evidence and applying the law. It was significant that the proprietors of the later marks provided no compelling reasons for their choice of the distinctive 'BOTO' prefix.
For the full text of the decision, click here
Peeters Landbouwmachines BV v OHIM, Case T-33/11, 14
February 2012
Trade mark registration is based on the 'first-to-file'
principle; property in a Community Trade Mark is established by
registration, not from earlier use. The case reasserts the factors
to be considered when judging whether an application for
registration is made in bad faith following from
Chocoladefabriken Lindt & Sprungli [2009] ECR
I-4893.
For the full text of the decision, click here
COPYRIGHT
Karen Murphy v Media Protection Services Ltd [2012]
EWHC 466, 24 February 2012
The High Court has allowed pub landlady, Karen Murphy's appeal
against her criminal conviction for screening broadcasts of live UK
Premier League football matches which she received via a Greek
decoder, to avoid paying higher UK subscription fees, following a
ruling handed down by the CJEU in October 2011.
For the full text of the decision, click here
Belgische Vereniging van Auteurs, Componisten en
Uitgevers CVBA (SABAM), Case 360/10, 16 February 2012, 16 February
2012
The CJEU has ruled that an injunction which would
require the operator of a social networking site to install an
expensive monitoring system to monitor all of its users' use of
its site, for an indefinite period, as a preventative measure to
curtail copyright infringements, contravened the fundamental right
of the social networking site's operator to conduct its
business. While the CJEU also recognised copyright holders'
fundamental right to property, and the obligation of member states
to ensure that rights holders can apply for an injunction against
intermediaries whose services are used to infringe copyright, these
rights were not inviolable and in this case, because of the
severity of the obligations that the injunction sought would have
placed on the online intermediary, were outweighed by the
defendant's rights.
For the full text of the decision, click here
Dramatico Entertainment Limited and others v British
Sky Broadcasting Limited and others [2012] EWHC 268 (Ch), 20
February 2012
The High Court has held that the acts of the
operators and users of BitTorrent P2P site "The Pirate
Bay" constitute infringement of copyright in sound recordings.
This infringement opens the way for right-holders to obtain an
injunction under s97A Copyright, Designs and Patents Act 1988
("CDPA") against a series of ISPs to block access to The
Pirate Bay site.
For the full text of the decision, click here
Meltwater Holding BV v Newspaper Licensing Agency, CT
114/09, 14 February 2012
The Copyright Tribunal has given its interim decision
in the ongoing dispute between the media monitoring service
Meltwater and the Newspaper Licensing Agency (NLA) concerning the
terms on which online newspaper websites can be used by press
cutting agencies and web news aggregators.
The tribunal confirmed that an end-user licence was necessary, but
reduced the NLA's proposed licence fee by 90%.
For the full text of the decision, click here
Temple Island Collections Ltd v New English Teas
Ltd & Anor [2012] EWPCC 1, 12 January 2012
The Patents County Court has held that where taking a photograph
means that decisions are made as to light, angle and features
included in the foreground and background, photographs are works
reflecting the intellectual creativity of the author.
For the full text of the decision, click here
Stephen Slater v Per Wimmer [2012] EWPCC 7, 16 February
2012
The Patents County Court has held that a cameraman
and a celebrity organising a skydiving stunt are co-owners of the
footage of the stunt shot by the cameraman. Judge Birss Q.C. held
that it was not necessary to imply a term of co-ownership into the
contract (which was silent on IP ownership) but that there was
statutory co-ownership under the CDPA. The judge gives guidance on
the definition of "producer" for the purposes of the
CDPA. The Court held that there was an implied term of co-ownership
of foreign copyrights.
For the full text of the decision, click here
PATENTS
El-Tawil v Comptroller General of Patents [2012]
EWHC 185 (Ch), 10 February 2012
The High Court has upheld the decision of the IPO in
determining that an application to register a patent for the use of
zinc in treating inflammatory bowel disease should be rejected on
the grounds of insufficiency, and lack of novelty and inventive
step. Further, the Court ruled that the IPO's procedure had
been carried out properly and had not disadvantaged the
applicant.
For the full text of the decision, click here
Novartis Pharmaceuticals UK Ltd v Medimmune Ltd and
another [2012] EWHC 181 (Pat), 10 February 2012
The High Court has held that an SPC granted for a product protected
by a patented process was invalid. In summary: Arnold J provided
detailed analysis of the current state of the law in this area and
found the law to be uncertain, at least in cases other than those
of combined active products. Arnold J held that on the assumption
the patent was valid and infringed, the SPC was invalid. The
product upon which the SPC was based was not "identified
in the wording" of the patent as "the product
deriving from the process in question" as required by ECJ
case law. Arnold J refused to make a reference to the CJEU, and
instead leaves it for the Court of Appeal to consider, once it has
decided the appeal on validity and infringement.
For the full text of the decision, click here
University of Queensland and another v Comptroller
General [2012] EWHC 223 (Pat), 14 February 2012
Following the response to questions referred to the ECJ, the High
Court has partly allowed an appeal on SPC applications, stating
that: (1) Applications for a combination of active ingredients
could not be granted because some of the active ingredients were
not identified in the relevant patents relied on in support of the
marketing authorisation; (2) Applications relating to single active
ingredients could be granted, provided that the other requirements
are also met, even though the basic patent relied on contains not
only that active ingredient but also other active ingredients; (3)
It is not possible to obtain an SPC for a product by relying on a
process patent unless the claims of the process patent specifically
identify the product as deriving from the particular process; and
(4) More than one SPC can be granted for applications derived from
the same patent, provided they are for different products.
For the full text of the decision, click here
DATABASE RIGHTS
Football Dataco Ltd & others v YAHOO! UK Ltd
& others, CJEU, Case C-604/10, 1 March 2012
The CJEU has confirmed that copyright protection for
football fixture lists as databases is not possible where skill and
labour has been expended only in the creation of the lists, rather
than in the selection or arrangement of data. The Court had
acknowledged in the Fixtures Marketing case in 2004 that football
fixture lists were databases, but then ruled out the possibility of
protection under the separate database right. This latest effort at
using copyright to protect the work involved in compiling fixture
lists has probably failed and will inevitably come as disappointing
news for sports licensing bodies which are likely now to lose
considerable licensing revenues.
For our full Law-Now on this decision, click
here
DESIGNS
Celaya Emparanza y Galdos Internacional SA v
Proyectos Integrales de Balizamiento SL, Case C-488/10, 16 February
2012
Celaya Emparanza y Galdos Internacional SA (Cegasa)
brought an action alleging infringement of a Community-registered
design against Proyectos Integrales de Balizamiento SL (PROIN). The
claim hinged on whether or not a registered Community design could
infringe an earlier registered Community design. The Spanish court
referred questions of interpretation of Community design rights
legislation to the CJEU for a preliminary ruling.
For the full text of the decision, click
here
CONFIDENTIAL INFORMATION
Coogan v News Group Newspapers Ltd, Mulcaire and others, [2012] EWCA Civ 48, 1 February 2012
The Court of Appeal has dismissed an appeal by a private investigator against orders made by Vos and Mann JJ in two phone-tapping cases, in which they ruled that he could not rely on the privilege against self-incrimination due to the derogation in section 72 of the Senior Courts Act 1981 for "intellectual property" including "technical or commercial information".
For the full text of the decision, click here
Caterpillar Logistics Services (UK) Ltd v Paula Huesca
de Crean, Court of Appeal, 21 February 2012
The Court of Appeal has dismissed an appeal against the High
Court's refusal to allow an interim injunction restraining a
former employee from (mis)using or disclosing her previous
employer's confidential information. Mrs Huesca de Crean (MH)
had left her previous employer to take up a new role with a
longstanding customer of that employer, and was subsequently
accused of putting herself in a position that could adversely
affect her former employer. The Court of Appeal also upheld a
decision to refuse a 'barring-out order' on MH, based on
the contention that MH was (or may be held to have been) a
fiduciary of CLS, which would have prohibited her from undertaking
any task or having any dealing in respect of her previous and new
employers' commercial relationship.
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 03/04/2012.