UK: IP Snapshot - April 2012

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


Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros v Boys Toys SA, Administración del Estado, Case C-190/10, 22 March 2012

The Court of Justice of the European Union (CJEU) has considered the meaning of the "date of filing" of a Community Trade Mark (CTM) and found that CTM Regulation effectively precludes the hour and minute of the filing of a CTM application from being taken into account under national law for the purposes of establishing the CTM's priority over a national trade mark filed on the same day. The CJEU found that the actual time of the filing is irrelevant for assessing priority, even though it is possible for the time of filing to be ascertained where the application has been filed electronically and held that it is the date of receipt which matters. This would be the case even where the national legislation governing the registration of national trade marks specifically considered the hour and minute of filing to be relevant in this regard.

For the full text of the decision, click here


Società Consortile Fonografici (SCF) v Marco Del Corso, Case C-135/10, 15 March 2012

The CJEU has considered a reference for a preliminary ruling from the Italian courts as to what constitutes a "communication to the public" of a sound recording under Article 8(2) of the Rental Directive, under which compensation should be paid if a sound recording is used for any communication to the public, and in the context of Article 3(1) of the Copyright Directive.

The CJEU held on the facts in question that (i) patients in a dentist's surgery generally formed a very consistent group of persons and were therefore not 'persons in general'; (ii) the number of people to whom the broadcast was made audible was insignificant; (iii) the broadcast was unlikely to have an impact on the number of patients the dentist had; (iv) patients visited a dental practice with the sole objective of receiving dental treatment; and (v) the broadcasting of phonograms was in no way part of dental treatment. The court therefore found that it could not be presumed that the usual customers of a dentist were receptive as regards the broadcast in question and that there was no communication to the public in these circumstances.

For the full text of the decision, click here

Phonographic Performance (Ireland) Ltd v Ireland and another, Case C-162/10, 15 March 2012

Using the criteria that it had set out in SCF (above), the CJEU has held that hotel operators who provide televisions or radios in guest rooms to which they distribute a broadcast signal, are 'users' making a 'communication to the public' under Article 8(2) of the Rental Directive of any recordings played in the broadcast, and are required to pay equitable remuneration, in addition to that paid by the broadcaster.

The ruling confirms the findings of the CJEU in 2006 in Case C-306/05 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SL which stated that communication by means of television sets to which is fed a signal initially received by the hotel constitutes communication to the public within the meaning of Article 3(1) of the Rental Directive, but departed from the decision in SCF for various reasons including that the court considered the broadcasting of phonograms by a hotel operator to be of a profit-making nature. This ruling will be of particular interest and concern to similar businesses throughout the EU (for example prisons, hospitals, nursing homes, residential care institutions) which could now face claims from collecting societies.

For the full text of the decision, click here

Case C-5/11, Criminal proceedings against Titus Donner, 29 March 2012

The Advocate General (AG) has held that under Article 4(1) of Directive 2001/29/EC (the Copyright Directive), there is a distribution by sale in a member state if a seller (i) targets consumers there; and (ii) creates or makes available to consumers a specific delivery arrangement and method of payment which enables consumers to purchase copies of copyright-protected works there. It was further noted that requiring traders to comply with copyright protection in the member state where distribution takes place does not have a disproportionate effect on the free movement of goods under Article 36 of the Treaty on the Functioning of the European Union (TFEU).    

For the full text of the decision, click here


Teva UK Ltd & Ors v Astrazeneca AB [2012] EWHC 655 (Pat), 22 March 2012

The High Court has held that a patent for a sustained release formulation of a drug used in the treatment of schizophrenia was invalid on grounds of obviousness. The antipsychotic drug, known as quetiapine and marketed by AstraZeneca under the trade mark Seroquel, had itself already been disclosed in prior art as a treatment for schizophrenia. Although AstraZeneca argued that the sustained release formulation disclosed by their patent differed from the prior art in that the prior art only referred to an immediate release formulation, the High Court held that it would have been an obvious step for a skilled person to take. It was further held that the problems AstraZeneca's patent aimed to resolve were 'illusory'.

For the full text of the decision, click here 

Gedeon Richter Plc v Bayer Pharma AG, Court of Appeal [2012] EWCA Civ 235, 7 March 2012

The Court of Appeal has dismissed an appeal against a High Court judgment of 2011 which found two Bayer patents (deriving from the same ultimate parent application) for the formulation of Ethinylestradiol and Drospirenone used in contraception were not invalid for added matter and were not obvious, and held the trial judge's decision was correct in every material aspect.

For the full text of the decision, click here

Merck Sharp & Dohme Corp and another  v Teva Pharma BV and another, High Court of Justice, Chancery Division, Patents Court, London, UK, 15 March 2012

The High Court has refused to strike out an application for an interim injunction and granted interim relief to the patent owner and Supplemental Protection Certificate (SPC) holder (the claimant), against a well-known generic manufacturer who had received governmental marketing approval but remained silent as to its intentions whether to launch its generic product prior to expiration of the claimant's patent. It was held that given the time and difficulty involved in obtaining marketing approval and the length of time in advance of expiry which the defendant had sought approval, the claimant had entirely reasonable grounds to believe that the defendant would infringe before the expiry of the patent and/or SPC.

For the full text of the decision, click here

Solvay S.A. v Honeywell Fluorine Products Europe B.V. Honeywell Belgium N.V. Honeywell Europe N.V., 29 March 2012

In a reference from the Dutch court, the AG has considered the circumstances in which a single EU national court can decide on patent infringement and invalidity issues that have been raised in respect of more than one EU country. The AG gave his opinion as to the correct interpretation of Articles 6(1), 22(4) and 31 of the Brussels Regulation and provided a slightly different approach to that adopted in the widely criticised rulings in Case C-4/03 Gat v LUK and Roche v Primus.

For the full text of the decision, click here


Force India Formula One Team Ltd v 1 Malaysia Racing Team SDN BHD and others [2012] EWHC 616 (Ch), 21 March 2012

The High Court has upheld a claim by Force India, against parties acting for a rival team, for equitable and contractual breach of confidence and copyright infringement in relation to the creation of confidential computer-aided design (CAD) files by the defendants under a previous agreement between the parties.

The court held that two defendant companies working for the rival team had infringed Force India's copyright by downloading electronic copies of the new designs which incorporated a substantial part of Force India's designs (the initial copying by the design company occurred in Italy, outside the court's jurisdiction.) In addition, employees of the two defendant design companies had misused the confidential files by using them as a shortcut, although they had not reproduced the information in their new design, and therefore equitable compensation was awarded for that misuse on the Wrotham Park basis.

For the full text of the decision, click here


Innoweb BV v Wegener ICT Media BV, March 2012

The Hague Court of Appeal has referred a number of detailed questions to the CJEU on database right infringements in particular concerning the interpretation of Article 7(5) of the Database Directive 96/9/EC.  This provision had been considered by the CJEU in the case of British Horseracing Board v William Hill in 2004 in which it found that William Hill's repeated and systematic extraction and re-utilisation of insubstantial parts of BHB's database did not reconstitute and/or make available to the public the whole or a substantial part of the contents of the database, and so did not conflict with normal exploitation of it or seriously prejudice BHB's investment.  This finding has been regarded as questionable particularly as the most commercially valuable parts were taken by William Hill. Since then, there has been very little further guidance on this issue.  This will be an interesting case to watch as legal developments on database right law are lagging considerably behind commercial reality.

(An English language version of the decision is not currently available)


Michael Toth v Emirates, Nominet intervening, High Court, 7 March 2012
Emirates airline has succeeded in an appeal against HHJ Birss's decision in the Patents County Court refusing to strike out an application by the unsuccessful respondent in a Dispute Resolution Service (DRS) dispute to have the DRS decision reversed on the basis that the DRS Appeal Panel made an incorrect finding.  Although only at an interim stage, this is an important decision for Nominet, who (represented by CMS) intervened in the proceedings, in effect supporting Emirates' position, in that it upholds the principle that their DRS is a stand alone Alternative Dispute Resolution mechanism that cannot be reviewed de novo by the courts.  
For the full text of the decision, click here


Jones v IOS (RUK) Limited (in members' voluntary liquidation) and another [2012] EWHC 348 (Ch), 2 March 2012

The High Court has dismissed a claim for breach of confidence and breach of a confidentiality agreement between a supplier of printing equipment and services, and an intermediary.  The decision follows a previous judgement that a non-contact clause in the confidentiality agreement breached Article 101 of the TFEU and was therefore void.  In dismissing the claim, Judge Hodge QC examined the potential use of loss of chance as a measure of damages for breach of a confidentiality provision, and Wrotham Park damages.

For the full text of the decision, click here


Case C-509/10 Josef and Thomas Geistbeck v Saatgut Treuhandverwaltungs GmbH, 29 March 2012

The Bundesgerichtshof (German Federal Court of Justice) has applied to the CJEU for a ruling and interpretation of Articles 14 and 94 of Regulation (EC) No 2100/94 on Community plant variety rights (the basic regulation), and of Regulation (EC) No 1768/95 implementing rules on the agricultural exemption provided for in Article 14(3) of the basic regulation.  If using the plant variety for propagation purposes on their own holdings, under the 'farmers' privilege', small farmers are not required to pay any compensation to a right holder, and other farmers are required to pay 'equitable remuneration' which is 'sensibly lower' than the amount charged for a licence.  Under Article 94 of the basic regulation, 'reasonable compensation' is payable by infringers in the absence of fulfilling the criteria of the farmers' privilege. 

The German court requested clarification as to how to calculate compensation due when a farmer fails to declare and pay under the farmers' privilege.  The CJEU ruled that in this circumstance, compensation must be calculated on an infringement basis, i.e. based on the average amount charged for the licensed production of propagating material of protected varieties of the plant species concerned in the same region (i.e. on an infringement basis), and not the lower compensation amount provided for by the farmers privilege derogation.

For the full text of the decision, click here


Golden Eye (International) Ltd v Telefonica UK Ltd (Consumer Focus intervening) [2012] EWHC 723, 26 March 2012

In the latest case concerning an application for a Norwich Pharmacal Order, in which Golden Eye (International) Ltd (GEIL) sought the disclosure of the names and addresses of up to 9,124 O2 subscribers alleged to have committed infringements of pornographic copyrighted works via peer-to-peer file-sharing, Mr Justice Arnold succinctly summarised the issues arising out of the application, namely questions as to the operation of the Norwich Pharmacal regime, the legitimacy of 'speculative invoicing' and the balancing act between the rights of copyright owners and consumers.

For the full text of the decision, click here

Fred Perry (Holdings) Ltd v Brands Plaza Trading Ltd, Court of Appeal, 1 February 2012 

The Court of Appeal has dismissed the appeal of counterfeiters against sanctions ordered against them following a judgment in a brand owner's favour and commented generally that in the future non compliance with procedural matters will be treated more seriously. 

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

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 27/04/2012.

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