UK: IP Snapshot - October 2012

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

TRADE MARKS

IG Communications Ltd v OHIM, General Court, Case T-301/09, 26 September 2012

The EU General Court has found that the mark CITIGATE, applied for as a Community Trade Mark in respect of advertising and consultancy services and design services, infringed the CITIBANK family of marks. Infringement was found to occur either by similar mark/similar goods infringement where the services were similar to those for which the earlier marks were registered, or, where they were dissimilar, because they took unfair advantage of or caused detriment to the distinctive character or repute of the earlier marks.  The General Court's comments on the concept of a "family" of marks are of particular interest.

For the full text of the decision, click here.

Wesergold Getränkeindustrie GmbH & Co. KG v OHIM, Case T-278/10, 21 September 2012

The EU General Court has annulled the Board of Appeal's decision in opposition proceedings regarding an application for a Community Trade Mark registration of the mark WESTERN GOLD with regard to spirits, in particular whisky. The opponent had claimed that the Community Trade Mark sought would infringe the earlier registered trade marks 'WeserGold', 'Wessergold' and WESERGOLD'.

The General Court agreed with the Board of Appeal that there was a low degree of similarity between the goods sold under the trade marks and that the marks themselves were significantly conceptually different (due to the difference in meaning between 'western' and 'weser') so as not to cause confusion. However, the court found that the Board of Appeal had erred in finding that the applicant had not claimed that the earlier marks had acquired enhanced distinctiveness through use.

For the full text of the decision, click here.

Reddig GmbH v OHIM, Case T-164/11, 19 September 2012

The EU General Court has upheld the decision of the Board of Appeal in relation to the invalidity of a Community Trade Mark for the shape of a knife handle. The Court held that the essential features of the mark were all exclusively functional. The fact that the knife handle also resembled the shape of a fish or a dolphin was irrelevant. The Court held that if the sum of the exclusively functional elements results in the creation of an ornamental image, this is not sufficient to avoid Article 7(1) of the Community Trade Mark Regulation, which states that signs constituting the shape of goods which is necessary to obtain a technical result cannot be registered. Accordingly, the claimant's application was dismissed.

For the full text of the decision, click here.

Starbucks (HK) Ltd. v British Sky Broadcasting Group Plc & Ors [2012] EWCA Civ 1201 (13 September 2012)

Two divergent High Court decisions in respect of Community Trade Mark infringement and invalidity proceedings, involving the same defendant's intended use of the name 'NOW TV' for a television service, have been upheld by the Court of Appeal. In the first case, the High Court had refused the application for injunction and ordered a stay of the infringement proceedings. Conversely, in the other case, the High Court had ordered an expedited trial and refused the respondent's application for a stay, referring to special grounds under Article 104(1) of the Community Trade Mark Regulation.

The Court of Appeal clarified that issues asserted by the claimants such as the existence of a claim for passing off, the length of time before invalidity proceedings are expected to come before OHIM, or the reactive nature of an application to OHIM, will not constitute special grounds. In the second case, the High Court had nevertheless been entitled to find exceptional circumstances of urgency meriting refusal of the application for stay. This was because the launch of the respondent's service under the allegedly infringing name was imminent and would swamp the claimant's goodwill. The situation had also been unusual in the sense that a delay of the launch by interim relief would have been inappropriate. Conversely, the judge in the first case had been entitled to take an opposing view because the applicant had not shown urgency in launching its own service.

For the full text of the decision, click here.

Video Research USA, Inc. v OHIM, Case T-267/11, 19 September 2012

The EU General Court has upheld the decision of the OHIM Board of Appeal in relation to the failure of an applicant to apply for renewal of the registration of a Community Trade Mark within the time limit provided. The applicant had applied for restitutio in integrum, stating that the failure to renew was due to a combination of human error by the applicant's representative and a computer programming error. The Court held that the requirement to take "all due care" under Article 81 of the Community Trade Mark Regulation extended not only to applicants, but also to their agents. In this regard, it was insufficient for the applicant to state that he had fulfilled the requirement by selecting a reputable and experienced law firm that specialised in trade mark law. The actions of the representatives are to be considered actions of the trade mark proprietor, and the proprietor's representative had clearly failed to adhere to this standard. The action was rejected in its entirety.

For the full text of the decision, click here.

National Lottery Commission v OHIM, General Court, Case T-404/10, 13 September 2012 

The EU General Court has overturned a decision of the Board of Appeal regarding the well known "Crossed Fingers" logo used for the National Lottery. The Board had refused the National Lottery Commission's appeal against a finding that its trade mark registration for the logo was invalid due to an alleged prior copyright owned by an Italian national. The General Court found that the Board of Appeal had not approached the matter correctly as it may have misinterpreted provisions of Italian law concerning authenticity of documents.

For the full text of the decision, click here.

United States Polo Association v OHIM, Case C-327/11 P, 6 September 2012

The ECJ has rejected an appeal against the EU General Court's decision that the marks U.S. POLO ASSN. and POLO-POLO were likely to be confused in relation to the Class 24 category of textiles, in particular domestic textile products, on the basis that the signs at issue were visually, phonetically and conceptually similar. The ECJ found that both the Board of Appeal and the General Court were correct in their analysis and application of case law. The grounds of appeal brought forward by the opponent were either unfounded or inadmissible, primarily because they were challenging findings of fact which were not reviewable by the ECJ.

For the full text of the decision, click here.

COPYRIGHT

Emma Delves-Broughton v House of Harlot Limited, 18 May 2012, Patents County Court

In a rare decision on moral rights, the PCC has upheld a claim that the manipulation of photographs can constitute derogatory treatment, and therefore a breach of the photographer's moral rights, despite the judge's view that the treatment was neither "mutilation" of the photo nor treatment likely to affect the photographer's reputation adversely.

For the full text of the decision, click here.

Destra Software Ltd v Comada (UK) LLP and others [2012] EWPCC 39, 11 June 2012

The PCC has dismissed an application to transfer a case regarding the use of fund management software which the defendants had commissioned from the claimant to the High Court. The claimant had alleged that the defendants had exceeded the terms of their licence.

The defendants applied for the case to be heard in the High Court due to the complexity of the issues. The claimant responded that he was a sole trader and unable to bring the claim in the High Court. Instead, the claimant applied to have the preliminary issue of ownership and the licence to be heard by the PCC. The court found that the preliminary issue was one that would be suitable for the PCC to examine and dismissed the application for the transfer.

For the full text of the decision, click here.

PATENTS

Liversedge v Owen Mumford Limited & Abbott Laboratories Limited [2012] EWPCC 40 September 2012

The PCC has held that an award of costs will not exceed the £50,000 cap on recoverable costs in the PCC even where there are two winning defendants who have been separately represented. If the single cap is likely to be a concern to the defendants, this should be raised early in proceedings, at the CMC.

For the full text of the decision, click here.

Actavis Group PTC EHF & Anor v Sanofi Pharma Bristol-Myers Squibb SNC [2012] EWHC 2545 (Pat)

The PCC has referred two questions of interpretation of Article 3 of Regulation 469/2009/EC regarding supplementary protection certificates (SPC) for medicinal products to the CJEU for a preliminary ruling.

The questions have arisen in invalidation proceedings against the proprietor of an SPC covering the combination of the anti-hypertensive drug irbesartan and hydrochlorothiazide (HCT). The SPC covering the active ingredient alone has expired, but the combination SPC will remain valid until 14 October 2013. The claimant, who intends to market both the active ingredient and the combination product, argues that the combination SPC is invalid because the combination product was not specified or identified in the patent claims. The current test for what is meant by 'protected by a basic patent in force', which precludes the grant of SPCs relating to active ingredients which are not specified in the claims of the basic patent, has resulted in divergent rulings in parallel cases across Europe. The Patents Court therefore chose to request clarification on the interpretation of Article 3 from the CJEU.

For the full text of the decision, click here.

Vernacare Limited v Environmental Pulp Products Limited [2012] EWPCC 41, September 2012

The PCC has held that a patent for a disposable washing bowl used in hospitals and care homes was valid and infringed by two versions of the defendant's washing bowl. The PCC rejected the defendant's arguments that the patent should be declared invalid based on obviousness over cited prior art and common general knowledge as well as invalid added matter. The case demonstrates the benefits of using the PCC for simple patent disputes in that the trial was held and, the judgement was given, all in a day.

For the full text of the decision, click here.

Eli Lilly & Company v Human Genome Sciences, Inc [2012] EWCA Civ 1185 (05 September 2012)

Further to the Supreme Court's recent decision that Human Genome Sciences' patent for Neutrokine-α was not invalid for lack or industrial applicability, the outstanding validity issues relating to three claims, which were remanded by the Supreme Court, have been considered by the Court of Appeal. The Court upheld Kitchin J's decision that claim 13 was valid (despite Eli Lilly's contention that it was insufficient), yet rejected Kitchin J's findings that claims 18 and 19 were also invalid for insufficiency.

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 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 30/10/2012.

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