UK: IP Snapshot - July 2012

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

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.