TRADE MARKS AND PASSING OFF
Starbucks (UK) Ltd v British Sky Broadcasting Group Plc &
Others [2012] EWHC 1842 (Ch), 29 June 2012
The High Court has refused to grant a stay of proceedings for
infringement of a Community Trade Mark under Article 104(1) of the
CTM Regulation where there were parallel proceedings before
OHIM. The High Court found that there were special grounds
for refusing a stay, in particular as the OHIM proceedings were
likely to be prolonged. Conversely, the Court granted
expedition of the infringement claim. The Court gave special
consideration to the fact that the respondent's imminent launch
of its rival service under the allegedly infringing trademark would
surmount the claimant's goodwill.
For the full text of the decision, click here.
Woolley & anor v Ultimate Products Ltd & anor [2012] EWCA
Civ 1038, 26 July 2012
The Court of Appeal has upheld the decision of the High
Court, which found that the defendants were liable for passing off
their watches as those of the claimants by virtue of use of the
name HENLEYS. This case serves as a useful example of the
flexibility of the tort of passing off. Decisions are highly fact
dependent making it easier for judges to distinguish previous
judgments and hence the court is afforded a broad discretion in
such cases.
For the full text of the decision, click here.
COPYRIGHT
R v Anton Benjamin Vickerman [2012] Newcastle Crown Court.
Indictment No. T20097188, 14 August 2012
In the latest of a series of cases considering the liability of
individuals who operate websites providing links to unauthorised
copyright content, the defendant was convicted of two offences of
conspiracy to defraud and given two concurrent sentences of four
years. The defendant in this case operated the website
'Surf the Channel', which contained links to films,
television programmes and popular music to be downloaded or
streamed by internet users. The vast majority of the content
made available through the website infringed copyright. The
sentencing remarks of His Honour Judge John Evans criticise the
defendant's actions mainly in relation to the links to films
– in March 2009 there were in excess of 5,500 such
links. The defendant's assertion that he believed that
what he was doing was lawful was rejected.
For the full text of the decision, click here.
PATENTS
International Stem Cell Corporation BL O/316/12, 16 August
2012
An IPO hearing officer has ruled on the patentability of two
inventions relating to the production of human stem cells and
corneal tissues from these stem cells. The hearing officer
found that the material used in producing the stem cells fell
within the definition of 'human embryo', as identified by
the CJEU in the Brüstle v Greenpeace case. Despite there
being no possibility of the biological material in question ever
developing into a viable human being, the inventions were not
considered patentable on the basis that they constituted use of
human embryos for industrial or commercial purposes.
For the full text of the decision, click here.
(1) Virgin Atlantic Airways Limited v Jet Airways (India) Limited
and Contour Aerospace Limited; (2) Virgin Atlantic Airways Limited
v Delta Airlines Inc and Contour Aerospace Limited; (3) Virgin
Atlantic Airways Limited v Air Canada and Contour Aerospace
Limited; (4) Contour Aerospace Limited v Virgin Atlantic Airways
Limited; (5) Premium Aircraft Interiors Limited v Comptroller
General of Patents and Virgin Atlantic Airways Limited [2012] EWHC
2153 (Pat), 27 July 2012
The High Court has given a further judgment in the dispute
between Virgin Atlantic Airways, Contour Aerospace (a manufacturer
of passenger aircraft seats) and various airline clients of
Contour. In this decision, Floyd J held that the key patent,
following amendments required by the EPO, was valid but not
infringed by Contour's product, although one of the subsidiary
patents would be infringed by further sales (which were
unlikely). The judgment is notable for an in-depth discussion
of the circumstances in which the decisions of bodies established
by international treaty (such as the EPO) can be challenged in the
UK courts.
For the full text of the decision, click here.
Eli Lilly and Company v Human Genome Sciences Inc [2012] EWHC 2290
(Pat), 3 August 2012
The High Court has refused an application by Eli Lilly to
make an immediate reference to the CJEU, but stated that Eli Lilly
was free to make a further application for a reference in the
future once an underlying action between Eli Lilly and HGS in
relation to the validity of a patent held by HGS had been
resolved. Eli Lilly had brought the application in light of
concerns that HGS would apply for a supplementary protection
certificate ("SPC") for the patent in question. Eli
Lilly sought a declaration that if an SPC were granted to HGS based
on a marketing authorisation obtained by Eli Lilly for their own
product, such SPC would be invalid. It was considered that
the present timing of a reference to the CJEU was not appropriate,
rather than that the underlying issues did not warrant a
reference.
For the full text of the decision, click here.
IT
WIPO Arbitration and Mediation Center: Neste Oil Oyj v
Föringen Greenpeace-Norden, Case No. D2012-0891, 23 July
2012
In a recent decision by the WIPO Arbitration and Mediation
Centre, it was held that two "parody sites" set up by
Föreningen Greenpeace-Norden criticising the negative
environmental impact of Finnish oil refining company Neste Oil Oyj
were established for legitimate, non-commercial purposes. The
domain names in question were "www.nestespoil.com" and
"www.nestespoilreturns.com". Although the Panel did
find that the websites were confusingly similar to the NESTE OIL
trademark, it was held that the predominant aim behind the websites
was of "fair-use criticism", and not commercial
gain. The complaint was therefore denied and Greenpeace was
permitted to retain the domain names.
For the full text of the decision, click here.
Nominet Dispute Resolution Service: DCM (Optical Holdings) Limited
v Sasha Rodoy, Case No. D00011271, 3 August 2012
A complaint filed by DCM (Optical Holdings) Limited with
Nominet in relation to the domain name
opticalexpressruinedmylife.co.uk was denied, as the website was not
an Abusive Registration. The Nominet Expert considered that
the domain name clearly conferred expressions of critical opinion,
which no competent English reader would believe were endorsed by
the owner of the trade mark. Criticism websites remain a fair
use of a trade mark, and even suggestions of commercial gain were
not sufficient to deem the registration abusive, in contrast with a
previous Nominet decision in ihateryanair.co.uk.
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 21/09/2012.