UK: IP Snapshot May 2012

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


Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, Case C 523/10, 19 April 2012

The CJEU has ruled on the interpretation of Article 5(3) of Regulation (EC) No. 44/2001 in the context of trade mark infringement through the use of AdWords. The CJEU held that an action relating to infringement of a trade mark registered in a Member State, because of the use by an advertiser of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State, may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser.

This decision may assist right owners in enforcing their rights against infringements through use of AdWords occurring on the internet and emanating in a jurisdiction in which the complainant has no rights. However, it is important to recognise that this only addresses the issue of the courts' jurisdiction and not whether infringement has actually occurred.

For the full text of the decision,  click here 

This decision follows the opinion of the Advocate General given in February 2012. For our IP Snapshot coverage of this earlier opinion, click here

Tea Forté Inc v OHIM, Case R 2492/2010-2, 14 February 2012

The OHIM Second Board of Appeal have rejected an appeal against the Cancellation Division's refusal to grant a declaration of invalidity in relation to a 3 dimensional pyramid shaped Community Trade Mark (CTM), registered in respect of tea, healthcare and packaging on the basis of an earlier CTM and Community registered design.

Although the marks both consisted of geometric shapes with string attached, the Cancellation Division found that there was a low degree of similarity between the earlier CTM and the contested mark as the element common to both signs (the pyramid structure) was recognised by the average European consumer as being a 'handy' shape for tea and not distinctive.  Therefore, the consumer would pay attention to the elements which were fanciful or devoid of functionality and no likelihood of confusion existed.   The claimant appealed, but the earlier decision was upheld by the board of appeal on the same grounds.

This case illustrates how much attention OHIM will pay to the distinguishing elements when marks are distinctive or generic within their field of use, and is also a reminder to ensure that registered design protection is consistent with the depiction of the accompanying CTM if it is to be used to bring an action of invalidity.

For the full text of the decision,  click here


Dramatico Entertainment Limited and others v British Sky Broadcasting Limited and others [2012] EWHC 1152 (Ch), 2 May 2012

The High Court has granted injunctions under s97A CDPA 1988 against five of the UK's six biggest ISPs to block access to BitTorrent P2P site "The Pirate Bay site" on the basis that the acts of the users and operators of the site constitute infringement of copyright in sound recordings.

Right holders should find this decision encouraging. This decision demonstrates that section 97A is a valuable weapon in the right holder's armoury to cut off access to infringing material at source. Furthermore, this is reassuring in light of the delays in introducing the site-blocking regulations under sections 17 and 18 of Digital Economy Act 2010. These provisions have been judged by Ofcom to be too slow to effectively challenge the problem of sites such as PTB since operators can simply move the site to different servers before an injunction is issued.

For the full text of the decision, click here  

This judgment follows the decision handed down in February 2012. For our IP Snapshot coverage of this earlier decision,  click here

SAS Institute Inc v World Programming Ltd, Case C-406/10, 2 May 2012

The CJEU has now ruled on the issues referred to it in the case of SAS Institute Inc. v World Programming Ltd, confirming that the copyright protection of computer programs includes source code and object code, but not the functionality of a computer program, its programming language or the format of data files used to exploit certain functions. The Court also considered Article 5(3) of Directive 91/250/EEC and confirmed that this clearly permitted a licensee to observe, study or test the functioning of a program in order to determine the ideas and principles underlying any element of it. Finally, the Court considered the scope of copyright protection for the user manual of a computer program.

It should be noted that despite the exclusion of programming language or format of data files from 'forms of expression', reproduction of part or all of a copyright work containing these may still amount to infringement.

For our full Law Now of this important decision,  click here

Bierbach, administrator of UsedSoft GmbH v Oracle International Corp, Case C-128/11, 24 April 2012

The Advocate General considered the extent to which exhaustion of rights could apply to software sold by way of download from the internet and to "second hand" user licences.  He found that Article 4(2) of Directive 2009/24/EC must be interpreted as meaning that the right to distribute a copy of a computer program is exhausted if the rightholder, who allowed that copy to be downloaded from the internet to a data carrier, also granted, for consideration, a right to use that copy for an unlimited period of time.  However, in the event of resale of the right to use the copy of a computer program, the purchaser could not rely on exhaustion of the right to distribute that copy in order to reproduce the program himself by creating a new copy, even if the first acquirer had erased his copy or no longer used it.

If the opinion is followed by the CJEU, this will severely restrict the market in used software licences to the extent that software is not distributed on physical media such as CD-ROMs.  There is similar debate in the US over application of their "first sale" doctrine in a digital environment.  These issues are also connected with the debate over whether supply of software is a supply of goods or services. 
For the full text of the decision, click here


Merck Canada Inc v Sigma Pharmaceuticals plc, Patents County Court, 27 April and 3 May 2012

Under special provisions relating to importation of patented pharmaceutical products contained in the EU Accession treaties of 2004 and 2007, a patent owner is not required to give notice to a parallel importer that it intends to enforce its patent rights before obtaining relief for patent infringement.
This is the first known English court judgment to consider the Specific Mechanism.  The burden remains on parallel importers to ensure that they do not import product protected by the Specific Mechanism: if they do, they will be liable, even if the patent owner is late in objecting.

For the full text of the decisions, click here (27 April) and here (3 May)

Wagner International AG and others v Earlex Ltd [2012] EWHC 984 (Pat), 18 April 2012

The High Court has found that a patent for an air cap used in a spray painting system was not infringed by a competitor product and that the patent was invalid on the basis of added matter and obviousness over prior disclosure at a trade show.

In relation to the trade show disclosure, Floyd J found that a skilled person using the product on display at the home show, would have noticed the holes in the air cap and realised their function and as a result he would have been able to reproduce the invention himself with minimal trial and error experimentation. However, on novelty, Floyd J found that the fact that the air holes which were the subject of the invention would have been visible to anyone visiting the home show was not an anticipation and so was not novelty-destroying.

This decision shows how the same disclosure can result in the patented invention being obvious, without also destroying the novelty of the invention. The case also provides a good summary of the requirements for establishing enablement and the ways of considering product prior art as opposed to documentary prior art.

For the full text of the decision, click here  

Convatec Ltd and others v Smith & Nephew Healthcare Ltd and others [2012] EWCA Civ 520, 2 May 2012

The Court of Appeal has upheld the decision of the Patents Court in 2011, which had held that one claim of the patent was valid but not infringed. ConvaTec had appealed against the finding of non-infringement and Smith&Nephew had cross-appealed against the finding on validity.  Both appeals were rejected and the decision of the first instance court was upheld. 

This case is unusual given the adversarial system employed by the UK courts, in that the first instance judge (His Honour Judge Birss) rejected the claim construction arguments of both sides and reached his own conclusion as to the meaning of the claims. The Court of Appeal upheld his interpretation.

For the full text of the decision, click here


Samsung Electronics (UK) Ltd and another v Apple Inc [2012] EWHC 889 (Ch), 4 April 2012

The High Court has ruled that it does not have jurisdiction to hear an application for a declaration of non-infringement of a registered Community design, and that Samsung's application for the declaration should not be stayed pending the outcome of OHIM invalidity proceedings. Apple had previously brought various proceedings against Samsung, alleging that Samsung's Galaxy tablet computer infringed Apple's registered Community design and Samsung subsequently commenced proceedings in OHIM claiming that Apple's design was invalid. In an action before the High Court, Samsung sought declarations of non-infringement and an injunction restraining Apple from making threats to sue for infringement. Whether a declaration of non-infringement will be granted is yet to be decided.

For the full text of the decision, click here  


Bonnier Audio AB and others v Perfect Communication Sweden AB, Case C-461/10, 19 April 2012

The ECJ has given a preliminary ruling on questions referred to it on the legality of a Swedish law that allows intellectual property rights-holders to obtain access, for enforcement purposes, to communications data that has been retained for the purposes of the investigation, detection and prosecution of serious crime under the provisions of the Data Retention Directive (the Directive). The court held that the Directive does not preclude national laws to allow ISPs to be ordered to provide information identifying a subscriber whose IP address is suspected of being used for infringement purposes and further, that in this context it is irrelevant whether a member state has actually implemented the Directive or not.

Unfortunately for rights-holders, communication service providers and individual users, the ECJ has left certain questions unanswered, therefore leaving the door open for member states to adopt further laws that allow the processing of data contained in existing data pools for purposes other than those for which they were originally collected.

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 29/05/2012.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
CMS Cameron McKenna Nabarro Olswang LLP
CMS Cameron McKenna Nabarro Olswang LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
CMS Cameron McKenna Nabarro Olswang LLP
CMS Cameron McKenna Nabarro Olswang LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions