UK: IP Snapshot June 2012

Last Updated: 29 June 2012
Article by Nick Beckett, Lucy Kilshaw and Tom Scourfield

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


Helena Rubinstein SNC and another v OHIM, Case C-100/11P, 10 May 2012

The CJEU has rejected all grounds of appeal raised by Helena Rubinstein and L'Oreal in connection with the declaration of invalidity granted against their respective Community Trade Mark (CTM) registrations for BOTOLIST and BOTOCYL. This decision emphasises the CJEU and General Court's inability to rule on findings of fact which have been made by lower courts. Appellants should always be careful to ensure that appeals are based on a point of law. Furthermore, it is interesting to note the Court's approach in respect of the documents which were not translated. While this offers some comfort to those filing documents in another language without an accompanying translation, parties must be careful to ensure that all of the relevant rules of the court are adhered to.

For the full text of the decision, click here

Chocoladefabriken Lindt & Sprüngli AG v OHIM, Case C-98/11 P, 24 May 2012

The CJEU has dismissed an appeal against the finding that a three-dimensional mark for chocolate products (a rabbit shaped chocolate wrapped in gold with a red ribbon bow and bell) lacked both inherent and acquired distinctiveness. The court supported the finding that evidence of acquired distinctiveness for three countries would not suffice to evidence acquired distinctive character throughout the EU.

For the full text of the decision, click here

Lumos Skincare Ltd v Sweet Squared Ltd and others [2012] EWPCC 22, 10 May 2012

In a passing off case brought in relation to the use of the mark "LUMOS" for skincare products against companies manufacturing and distributing nail care products under the same name, the Patent's County Court (PCC) has held that the passing off action was unsuccessful on the basis that there had been no misrepresentation by the defendants.

For the full text of the decision, click here

Environmental Manufacturing LLP v OHIM, Case T-570/10, 22 May 2012

The EU General Court has ruled that demonstrating detriment to a trade mark's distinctive character does not require proof of a change in economic behaviour of the average consumer of the goods or services for which the mark is registered. Although this point had been considered by the ECJ in a previous case, the EU General Court interpreted Article 8(5) of the Community Trade Mark (CTM) Regulation differently. The action, which concerned trade marks for gardening equipment, was dismissed.

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

Yoshida Metal Industry Co. Ltd v OHIM, Cases T-331/10 and T-416/10, 8 May 2012

The EU General Court has upheld an appeal brought by Yoshida Metal Industry to conclude that two figurative CTMs both representing a surface with black dots for knives and other utensils were validly registered and were not contrary to Article 7(e)(ii) of the CTM Regulation which prohibits trade marks for the shape of goods necessary to obtain a technical result. This case is encouraging to trade mark owners seeking protection of two dimensional figurative marks, as such applications must be assessed solely on the basis of the registration even when in practice they will relate to the shape of three dimensional products.

For the full text of the decisions, click here (T-331/10) and here (T-416/10)


Case C-457/10P - AstraZeneca AB and AstraZeneca plc v European Commission, Opinion of Advocate General Mazak, 15 May 2012

The Advocate General (AG) has given an opinion on AstraZeneca's appeal against the decision of the General Court to uphold the European Commission's 2005 decision which held that AstraZeneca's actions in relation to applications for SPCs and deregistration of marketing authorisations concerning its drug Losec, has breached Art 82 of the EC Treaty, and for which it was fined EUR52.5 million. The AG stated that there had not been any errors in the lawfulness of the earlier decisions relating to the definition of the relevant market, assessment of dominance, abuses of dominant position and the level of fine.

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

Neurim Pharmaceuticals (1991) Ltd v Comptroller-General of Patents Case C 130/11, 3 May 2012

The AG has given an opinion concerning the grant of an SPC for a product where there is an earlier marketing authorisation (MA) for a different medicinal product with the same active ingredient. If the CJEU adopts the AG's approach, SPCs may be granted despite the existence of an earlier MA for the same active ingredient, so long as the previously authorised use does not fall within the scope of the basic patent on which the SPC application is based.

For the full text of the decision, click here

Medeva BV v Comptroller General of Patents [2012] EWCA (Civ) 523, 3 May 2012

The Court of Appeal has applied the recent ruling of the CJEU to Medeva's applications for SPCs relating to combination vaccines, and has decided that the answers given by the CJEU to questions it referred in relation to the grant of SPCs for a patent for a vaccine which was only marketed in combination with other vaccines, supported the decision of the Intellectual Property Office and the High Court that such SPCs could not be granted. Further, it was held that the "infringement" test for determining whether Article 3 of the SPC Regulation applied was not the correct test.

For the full text of the decision, click here

Unilever PLC v S C Johnson & Son Inc [2012] EWPCC 19, 25 May 2012

In a dispute in which Unilever applied to revoke two patents held by S.C. Johnson & Son Inc., relating to the cleaning of bath and shower enclosures, Birss J has held one patent wholly invalid and the other partially invalid due to obviousness. An interesting feature of this case was that two substantial organisations chose to bring their case before the PCC, which could be interpreted as a sign of growing confidence in the tribunal. In his judgment, Birss J stated that the PCC was a suitable place for the case to be heard due to the issues to be decided, the evidence consisting only of reports from in-house experts, junior intellectual property counsel representing both parties and the trial only taking one and a half days.

For the full text of the decision, click here

Nokia OYJ (Nokia Corporation) v IPCom GmbH und Co KG [2012] EWCA Civ 567, 10 May 2012

The Court of Appeal has dismissed an appeal, and upheld the decision of the High Court of Justice Chancery Division (Patents Court), finding that IPCom's European Patent is partially valid and infringed by certain Nokia mobile phone devices. The facts concerned a patent provided for a system for controlling access to an uplink channel. In reaching their judgement the justices examined the law surrounding 'added matter' to patent applications, and the law surrounding 'obviousness' as a means to defeat patent applications.

For the full text of the decision, click here


Football Dataco Ltd and others v Sportradar GmbH and another; and Football Dataco Ltd and others v Stan James Abingdon Ltd and others, [2012] EWHC 1185 (Ch), 8 May 2012

In contrast to an earlier decision (Dataco v Yahoo!) stating that football fixture lists do not have database right protection, the High Court has held that database rights subsist in football results data where substantial investment had been used in obtaining the data.

For the full text of the decision, click here

For our full Law Now on the earlier Dataco v Yahoo! 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 21/06/2012.

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