UK: Intellectual Property Bulletin - Winter 2013

TRADE MARKS

Use of unauthorised celebrity images in fashion – a case of passing off?

Please click here for our recent article on the use of unauthorised celebrity images in fashion.

Golden Balls and Ballon D'Or – a likelihood of confusion?

The EU General Court has annulled a decision of the OHIM Appeal Board and has ruled that the marks BALLON D'OR and GOLDEN BALLS are not so similar that they were likely to confuse customers.

Golden Balls Ltd v OHIM, Cases T-437/11 and T-448/11, 16 September 2013.

Comment

Mr and Mrs Bodur are now free to register GOLDEN BALLS as a CTM. The case illustrates the approach the Court is likely to take when considering an opposition concerning two similar marks (that is, similar in that one requires translation to be similar).

Background

Mr and Mrs Bodur, a husband and wife business team, ran their own successful business selling clothing out of a shop in Hampstead under the GOLDEN BALLS brand. The mark was registered in the UK in 2001. In 2007, the couple licensed the brand to a game show and applied to register the mark GOLDEN BALLS as a Community Trade Mark ("CTM"). Intra Presse (a large media company and organiser of the Footballer of the Year Award) commenced legal proceedings against the couple opposing the application, saying that GOLDEN BALLS was too similar to Intra Presse's own CTM BALLON D'OR. The goods for both signs were identical or similar. When translated from French to English, BALLON D'OR means golden ball.

Initially, the opposition was rejected by OHIM but Intra Presse successfully appealed. The legal action caused financial hardship for the Hampstead couple and the case was appealed to the EU General Court on a pro bono basis.

Decision

The EU General Court reversed the decision of the Appeals Board, allowing the couple to register their brand as a CTM. The Court ruled there was only weak conceptual similarity between the two marks and said that the marks were unlikely to confuse customers.

Key points

The Court noted the following:

  • The signs were not identical or extremely similar conceptually. At most, they were slightly similar;
  • Even if the goods were identical, that weak or very weak conceptual similarity (which required a prior translation) was not sufficient to make up for the visual and phonetic dissimilarities which existed; and
  • Even if BALLON D'OR enjoyed a highly distinctive character, and goods/services were identical or similar, the weak conceptual similarity (which required a prior translation) was not sufficient to create a likelihood of confusion on the part of the target public.

The Court held that the Appeals Board was wrong to find the existence of a likelihood of confusion for certain goods and services (with the exception of specified services in class 9 for which the opposition was upheld).

PATENTS

Court of Appeal restates doctrine of privity of interest when considering whether a party is barred by estoppel from bringing patent revocation proceedings

Recently, the Court of Appeal considered the test to be applied when assessing whether there is privity of interest between a party to pending patent revocation proceedings and a third party (previously of the same group of companies) involved in earlier revocation proceedings concerning the same patent. The Court of Appeal, confirming and applying the test to the facts, upheld the High Court's ruling that there was no privity of interest and that accordingly the new party, Resolution Chemicals Ltd, was not barred by estoppel from bringing proceedings for revocation of Lundbeck's patent.

Resolution Chemicals Ltd v H. Lundbeck A/S [2013] EWCA Civ 924, 29 July 2013.

Comment

The Court of Appeal's ruling in Resolution Chemicals Ltd v H Lundbeck A/S helpfully restates the test for assessing whether there is privity of interest between a new party and a party to earlier proceedings. Lundbeck's action to have Resolution's challenge thrown out has proved unsuccessful and a trial will now take place challenging the validity of Lundbeck's patent. Had Lundbeck's action succeeded at this early stage, Resolution would have been estopped from bringing patent revocation proceedings.

Background

Lundbeck A/S ("Lundbeck") was the proprietor of a European patent (now expired, but the subject of a supplementary protection certificate extending protection ("SPC") until 2014) for the medicinal product escitalopram, used to treat depression. In 2005 a number of companies brought proceedings to challenge the validity of the UK counterpart of Lundbeck's patent. The proceedings were not successful. One of the companies was Arrow Generics Ltd ("Arrow"). At the time of the validity proceedings, Resolution Chemicals Ltd ("Resolution") was part of the same group of companies as Arrow.

Resolution became an independent company in 2009 and subsequently launched proceedings to attempt to revoke Lundbeck's patent (and therefore the SPC). Lundbeck argued that Resolution could not bring proceedings because it had privity of interest with Arrow and as such, Resolution was precluded from bringing the claim by reason of estoppel or abuse of process. Privity of interest provides an exception to the general principle of the law of estoppel in that the estoppel binds only the parties to the previous litigation.

The High Court judge ruled that Resolution was not precluded from bringing the action against Lundbeck because:

"...Resolution had no interest in escitalopram at the time of the previous proceedings...I conclude that there was no privity of interest between Resolution and Arrow Generics [Ltd] with regard to those proceedings...".

Lundbeck appealed. The issue before the Court of Appeal was whether there was privity of interest between Arrow and Resolution at the time of the earlier proceedings.

Decision

The Court of Appeal held that, on the facts, there was no privity of interest between Resolution and Arrow and that Resolution was not estopped from bringing patent revocation proceedings against Lundbeck.

Floyd LJ stated that the Court needed to consider the following when considering whether there was privity of interest:

  • The extent to which the new party had an interest in the subject matter of the previous litigation;
  • The extent to which the new party could be said to be, in reality, the party to the original proceedings by reason of his relationship with that party; and
  • Against that background, whether it was just that the new party should be bound by the outcome of the previous litigation.

The judge said that the High Court judge had applied those principles to the present case correctly; there was no error of law. Although Arrow and Resolution were part of the same group of companies under common control, there was no subsisting relationship between them such that the proceedings were being conducted by Arrow for Resolution's benefit. Arrow applied to revoke Lundbeck's patent because it had an interest in it being revoked. At the time, Resolution was not in a position to manufacture a generic version of the product, its previous efforts to do so had failed and ceased prior to the onset of the earlier proceedings. There was nothing to suggest that Resolution had stood back and allowed Arrow to fight its battle as was alleged by Lundbeck. Since Resolution's interest was no different to that of any other company, the facts were not sufficient to find Resolution bound by the outcome of the earlier proceedings.

Court of Appeal rules that evidence which post-dates a patent's priority date may be used to challenge patent validity

In a recent case concerning patent revocation and infringement, the Court of Appeal ruled that evidence which is dated after the priority date of a patent may be used to challenge the validity of a patent.

Generics (UK) Ltd (trading as Mylan) v Yeda Research and Development Co Ltd and another [2013] EWCA Civ 925, 29 July 2013

Comment

The analysis of whether the invention made a technical contribution involved a review of clinical trials data in this case. In fact, the judge correctly analysed the evidence as to whether the data supported the plausibility of the technical contribution and, on the facts, found that Mylan did not prove that the technical advance claimed did not exist. Therefore, although the judge had wrongly decided that post dated evidence could not be relied upon, the correct conclusion as to the effect of the evidence was reached.

Background

Yeda Research and Development Co Ltd ("Yeda") is the proprietor of a patented copolymer-1, used in the treatment of multiple sclerosis. Generics UK Ltd, trading as Mylan ("Mylan") brought proceedings for revocation of Yeda's patent, challenging the validity of the patent for obviousness over a prior publication and for lack of a technical contribution. Mylan also sought a declaration of non-infringement in order that Mylan could launch its own proposed generic product.

The High Court ruled that Yeda's patent was valid and that it was infringed by Mylan's proposed generic product. Mylan appealed.

Decision

The Court of Appeal rejected Mylan's appeal and found that the patent was valid. In addition, the Court ruled that Mylan had not established non-infringement of the patent. Accordingly, the revocation action was dismissed and the declaration of non-infringement was refused.

There were a number of matters at issue before the Court of Appeal, one of which arose as a result of Mylan's contention that it should be able to rely upon evidence dated after the priority date of the patent to show that a technical effect was not provided by the claimed products and therefore the patent lacked an inventive step and was invalid. (A patent is justified by its technical contribution and if an invention is found to have no plausible technical contribution, a patent is invalid.) Mylan's contention was rejected by the High Court judge, Arnold J, who ruled that such later evidence was not admissible when considering lack of technical effect.

The Court of Appeal, although upholding Arnold J's ruling on validity and infringement, disagreed with Arnold J's decision concerning post-dated evidence. The Court of Appeal ruled that the judge had been wrong to hold that if the patent specification made a technical effect plausible, it was not open to Mylan to challenge the existence of that effect by the use of later evidence. The "problem and solution" approach adopted by the European Patent Office to the ground of lack of inventive step required the court to judge inventiveness by reference to what it was that the invention brought with it – its technical effect or advance (AgrEvo (T939/92) and Conor v Angiotech [2008] UKHL 49 considered). In doing so, the Court was not judging the obviousness of the claimed invention by reference to later evidence; it was simply defining by evidence what it was that the invention was or brought with it. The Court of Appeal therefore held that post-dated evidence is admissible for determining whether the technical effect made plausible by the patent is a contribution for the purposes of determining obviousness.

A software patent application – novel and inventive but not patentable

The High Court has upheld a decision of the UK Intellectual Property Office that a claim at issue in this recent patent application for software that moves data between computers using email was novel and inventive but not patentable.

Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat)

Comment

The judgment makes the following very clear: whether an invention is novel and inventive does not determine whether an invention satisfies the requirements for patentability. Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution technical and therefore potentially patentable.

Background

The case concerned an appeal from the Comptroller in relation to a patent application submitted by Lantana Ltd. The patent application was entitled "Methods, Systems and Computer program products for retrieving a file or machine readable data", essentially for software that moved data between computers using email. The Comptroller refused the application because he considered that it was excluded from patentability under section 1(2) of the Patents Act 1977 as relating to "a computer program ..as such".

The case before the court concerned claim 1 of the patent, helpfully summarised by the judge as follows (in paragraph 8 of the judgment):

"The claim envisages two computers connected via the internet. The user of the local computer wants to retrieve data from the remote computer. When required, the local computer creates an email message containing machine-readable retrieval criteria and sends it to the remote computer. The remote computer receives the email, works out if the email contains any machine readable instruction and, if so, executes that instruction, retrieves the data and sends back an e-mail containing the requested data."

Lantana appealed the Comptroller's decision.

Decision

The High Court upheld the Comptroller's decision.

Key points

  • The judge, Mr Justice Birss, applied the four step test adopted in the Aerotel case to the patent application claim:

    1. properly construe the claim;
    2. identify the actual contribution;
    3. ask whether it falls solely within the excluded subject matter;
    4. check whether the actual or alleged contribution is actually technical in nature.
  • Although Lantana argued that the invention provided four technical effects, with a contribution technical in nature and not excluded from patentability, the judge addressed all four of the effects relied upon and found nothing which amounted to a technical contribution arising from the claim.
  • Looking at the claim overall, the judge said "In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character."

Accordingly, any contribution was held not to have a relevant technical effect and the appeal failed.

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Authors
Charles Russell's Intellectual Property Group
 
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