UK: IP Snapshot - July 2012

Last Updated: 26 July 2012
Article by Nick Beckett, Tom Scourfield, Paul Morton and Lucy Kilshaw

TRADE MARKS AND PASSING OFF

Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, 19 June 2012

The CJEU has ruled on the questions referred to it following the Chartered Institute of Patent Attorney's appeal against the refusal to allow its registration of "IP TRANSLATOR" in relation to Class 41 of the Nice Classification. Goods or services to be protected by a trade mark must be identified by an applicant with sufficient clarity and precision to enable competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought. An applicant may use all the general indications of a particular class to identify goods or services, but it must then also specify whether it intends to cover all or only some of the goods or services included in the alphabetical list of that class.

For the full text of the decision, click here.

Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd [2012] UKSC 27, 27 June 2012

In a long awaited decision, the Supreme Court has refused to allow a parallel trader to rely on so-called "Euro-defences" against a trade mark infringement claim, which will come as a great relief to brand owners across all industry sectors. The Supreme Court overturned the decision of the Court of Appeal and reinstated the summary judgment of the High Court, which had allowed Sun Microsystems' claim of trade mark infringement relating to second hand hardware imported from countries outside the EEA without its consent. The Supreme Court found that the Trade Mark Directive should be treated as "standalone" legislation and not subject to any additional limitation under competition law principles. Further, there was no relevant connection between the allegations made by the importer of anti-competitive behaviour by Sun Microsystems and the trade mark infringement claim.

For the full text of this decision click here.

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

Constellation Brands Inc v OHIM, Case T 314/10, 28 June 2012

The General Court (Sixth Chamber) has upheld the decision of the First Board of Appeal of OHIM of 29 April 2010 (Case R 1048/2009-1) in dismissing an application for restitutio in integrum, which provides for the re-establishment of a Community Trade Mark (CTM) owner's rights in certain circumstances. The decision related to the failure by Constellation Brands, Inc, and its representative Boult Wade Tennant, to renew the CTM 'COOK'S', and the subsequent cancellation of that mark upon expiry of registration. The Court held that the applicant had unsuccessfully contested that human error and the corruption of a back-up computer system had led to the failure to renew the mark. In light of this, the Court upheld the Board of Appeal's finding that such errors did not fall within the grounds for restitutio in integrum in accordance with Article 81 of Regulation No 207/2009.

For the full text of the decision, click here.

Stichting Regionaal Opleidingencentrum van Amsterdam v OHIM, Case T-165/11, 12 June 2012

The EU General Court has dismissed an application by Sichting to have the CTM 'COLLEGE' declared invalid. The trade mark was registered for services relating to Class 39 (tourism) and Class 43 (hotel services). Stichting claimed that the trade mark was contrary to Articles 7(1)(b) and (c) of Regulation No 207/2009 as it respectively lacked distinctive character and was descriptive of services. The Court held there was no general interest requiring that the term 'college' be capable of being used by all operators offering the relevant goods and services in Class 39. Further, as regards the hotel services in Class 43, the Court held that Stichting had failed to define the image that the contested trade mark would be capable of evoking in the minds of the relevant public.

For the full text of the decision, click here.

Fruit of the Loom Inc v OHIM, Case T-514/10, 21 June 2012

The EU General Court has ruled that use of the trade mark "FRUIT OF THE LOOM" does not constitute use of the mark "FRUIT". Following the decision of the OHIM Fourth Board of Appeal, the Court found that the terms 'fruit' and 'loom' were of equal importance in the overall impression created by the mark. Consequently the addition of 'of the loom' altered the distinctive character of the FRUIT mark, meaning that use of FRUIT OF THE LOOM was not equivalent to use of FRUIT.

For the full text of the decision, click here.

Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, Case T 534/10, 13 June 2012

The EU General Court has dismissed an appeal and upheld the decision of OHIM to dismiss an opposition under Article 8(1)(b) of the CTM Regulation on the basis that there was no likelihood of confusion between the signs 'HELLIM' and the earlier Community collective word mark 'HALLOUMI', and that the conceptual similarity could not offset the visual and phonetic differences between the signs at issue.

For the full text of the decision, click here.

COPYRIGHT

Criminal proceedings against Titus Donner, Case C5/11, 21 June 2012

The CJEU has held that a trader who directs his advertising at members of the public residing in a Member State and creates or makes available to them a specific delivery system and payment method, thereby enabling those members of the public to receive delivery of copies of works protected by copyright in that same Member State, makes, in the Member State where the delivery takes place, a "distribution to the public" within the meaning of Article 4(1) of the InfoSoc Directive.

For the full text of the decision, click here.

Reshaun Michael Massey (Child) v Dinamo Productions Limited [2012] EWPCC 27, 13 June 2012

In proceedings transferred from the High Court to the Patents County Court, Recorder Campbell has granted an application for strike out of a copyright infringement action in which the claimant had alleged five similarities between the defendants' television programme "The Wordles" and the claimant's programme "The Wevils".

The defendants provided documentary evidence in support of their application showing that all the elements complained of in their programme had been created prior to creation of the claimant's programme. The claimant did not make any submissions in response to the application. Recorder Campbell therefore granted the defendants' application to strike out the case in light of the documentary evidence provided and the claimant's failure to raise counter-arguments.

For the full text of the decision, click here.

PATENTS

T 1242/06 Tomatoes II / State of Israel, 31 May 2012

The Appeal Board of the European Patent Office has for the second time referred questions to the Enlarged Board of Appeal concerning the exclusion from patentability of plant breeding methods contained in Article 53 of the European Patent Convention (the "EPC"). The queries stem from oppositions to a patent concerning a method of breeding tomatoes which produces tomato fruit with a particular quality, but which claims were amended following the first referral to exclude process claims and were thus limited to the products only. In this second referral, the Appeal Board is seeking clarification as to the compatibility of allowing a product claim in circumstances where the necessary method of production is excluded pursuant to Article 53 EPC.

For the full text of the decision, click here.

Smith & Nephew Plc v Convatec Technologies Inc. [2012] EWHC 1602 (Pat), 13 June 2012


In an action relating to Convatec's European Patent (UK) entitled "Light Stablized Antimicrobial Materials", which concerns the use of silver as an antimicrobial agent which is photostable in wound dressings, Judge Birss QC, sitting as a judge of the High Court, has dismissed Smith & Nephew's application for the revocation of patent, allowed the their amendments to the patent and confirmed the validity of the patent. The issues which were debated were those of obviousness over the prior art and the law of amendment.

For the full text of the decision, click here.

DATABASES

Football Dataco and others v Sportradar GmbH and another, Case C-173/11, 21 June 2012

Advocate General Cruz Villalón has given an opinion in which he recommends that the ECJ hold that, where data is sent from a server in one EU member state in response to a request from an internet user in another EU member state and is then stored in the memory of that user's computer and displayed on its screen, the act of sending the information constitutes an act of "re-utilisation" by the sender within the meaning of Article 7 of the Database Directive (96/9/EC). He also considers that in this situation, re-utilisation occurs in all member states where a necessary act in the chain of re-utilisation occurs (in this case, both member states mentioned above).

For the full text of the decision, click here.

PLANT VARIETY RIGHTS


Raiffeisen Waren-Zentrale Rhein-Main eG v Saatgut-Treuhandverwaltungs GmbH, Case C 56/11, 14 June 2012

Advocate General Jääskinen has given an opinion in relation to the scope of a provider of seed-processing services' obligation to provide information to a Community Plant Variety right holder. AG Jääskinen considered that there needed to be temporal limits to such requests for information. However, the indications on which the request had to be based did not require supporting evidence, and could be based on information which the rights holder had about a farmer who was relying on farmers' privilege under Article 14 of the Plant Variety Regulation. It was held that it was for the national court to determine whether an adequate indication had been given.

For the full text of the decision, click here.

(See also T 1242/06 Tomatoes II / State of Israel, 31 May 2012 in Patents, above)

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 19/07/2012.

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

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

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.