UK: IP Snapshot May 2012

Last Updated: 6 June 2012
Article by Nick Beckett, Lucy Kilshaw and Tom Scourfield

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.

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