UK: IP Snapshot: December 2006

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

Trade Marks

O2 Holdings Ltd & another v Hutchison 3G Ltd (Court of Appeal)

In this long-running dispute between two mobile phone service providers, the Court of Appeal has referred two questions to the European Court of Justice on the interaction between trade mark infringement and the Comparative Advertising Directive (97/55/EC).

First, the Court asked whether the use of a mark for the purposes of a comparison which does not affect the essential function of the trade mark (to guarantee trade origin) is prevented by Article 5(1) of the Trade Marks Directive. Second, the ECJ was asked to consider whether or not the use of the trade mark for the purposes of comparative advertising must be either "necessary" or "indispensable" to such advertising. As an aside to these questions, Jacob L.J. noted that in his view, there is simply no reasonable need for trade mark law to cover this type of use, when there are independent mechanisms under the CAD for dealing with it. It remains to be seen how the ECJ will consider this issue.

For the full judgment in this case, click here

De Landtsheer Emmanuel SA -v- Comite Interprofessional du Vin de Champagne and Veuve Cliquot Ponsardin SA (Advocate General, ECJ)

In a further comparative advertising case involving various alcoholic beverages and their methods of production, the Advocate General of the European Court of Justice has given a detailed opinion on the various types of competitor advertising which would be deemed to fall under the Comparative Advertising Directive. A comparative advertisement which does not mention competitors by name may or may not be "comparative advertising" under the Comparative Advertising Directive, depending on whether specific competitors would be called to mind by the audience.

For the full text of the Advocate General’s Opinion, click here

Montex Holdings Limited -v- Diesel SpA(European Court of Justice)

In a case involving the transit of infringing clothing through the EEA, The ECJ has confirmed that trade mark owners cannot prevent the transport of goods bearing their trade marks through a Member State where the goods are merely in transit under Customs procedures and not actually placed on the market in the State of transit.

For the full judgment in this case, click here

Camper SL v OHIM (Court of First Instance)

The CFI has rejected an appeal against a finding of a likelihood of confusion on an opposition between two component marks incorporating the word "brothers" for identical goods. The Court considered that the dominant component in each mark was similar, which would negate other differences in visual and aural similarity. Although the later mark included additional matter which would indicate the origin of the goods, this would be perceived as subsidiary to the primary message and would not be sufficient to prevent an association between the two marks.

For the full judgment in this case, click here

My Fotostop Ltd (in administration) v Fotostop Group Ltd (High Court)

The High Court considered the interpretation of Article 17(2) of the Community Trade Mark Regulation in this decision involving the transfer of a Community Trade Mark under a business sale agreement. Article 17(2) provides that the transfer of the whole of an undertaking shall include the transfer of the CTM unless there is agreement to the contrary or the circumstances clearly dictate otherwise.

Copyright

Peer International Corporation -v- Termidor (High Court)

In this factually complex case, the High Court considered the ownership of the title to copyright in various Cuban songs. It serves as a useful reminder that title issues in copyright depend upon the law in force at the time of creation of the copyright work (See Schedule 1 of the CDPA 1988). The 1988 Act preserves certain previous provisions of the Copyright Act 1956, which in turn preserved parts of the Copyright Act 1911.

This case concerned a provision in the 1911 Act which prevented first owners of copyright from assigning their works for more than 25 years beyond their death (other than by will) and which created a reversionary interest of the remaining term of the copyright back in favour of the creator’s estate. This provision still applies to assignments of copyright that were made prior to the coming into force of the 1956 Act on 1 June 1957.

Patents

Merz Pharma GmbH & Co KgaA v Allergan Inc (Patents Court)

The Patents Court held that Allergan Inc’s patent was invalid on grounds of added matter, novelty and obviousness. Key to the decision was Kitchin J’s construction of the claims in the patent in suit as encompassing not only the active neurotoxic component in isolation, but also as part of the larger Botulinum toxin compound.

To read the full text of the judgment, click here

GlaxoSmithKline Biologicals SA v Sanofi Pasteur SA (Patents Court)

The Patents Court refused to stay UK revocation proceedings pending the outcome of opposition proceedings in the European Patent Office. The ability of the parties to pay costs, the benefits of providing an element of legal certainty in the UK, and the amount of time it would take for the EPO to finally rule on the patent were all key factors.

To read the full text of the judgment, click here

Cinpres Gas Injection Limited v Melea Limited (High Court)

The High Court has held that a claimant who failed to establish a legitimate claim to a patent was not entitled to relief from the comptroller under section 37(2) of the Patents Act 1977. Although the claimant had proved that the earlier decision granting the patent had been based on perjured evidence, the court strictly applied the doctrine of judicial estoppel in refusing to grant relief in a subsequent action.

To read the full text of this judgment, click here

Alexander F Ritchie v Envireneer Marine Cranes Limited (Patent Office)

The Patent Office Hearing Officer held that where an employee designed an invention as part of a special assignment for his employer and the invention might reasonably be expected to result from the carrying out of his duties, the invention will belong to the employer. The Hearing Officer did not consider that a clause reverting ownership of the invention to the employee in the event of the employer’s failure to exploit the invention was triggered by the employer’s liquidation.

For the full text of this 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 14/12/2006.

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 Topics
 
Related Articles
 
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions