IP Snapshot: April 2007

The Advocate General of the ECJ has recommended that the CFI’s decision in LIMONCELLO be annulled and returned to the Court for a new hearing. The Advocate General considered that the CFI had failed to apply the correct test in determining the overall impression between a figurative mark bearing the words LIONCELLO, and an earlier (word only) national mark LIMONCHELO for identical goods. In particular, the court had been wrong to conclude that only a visual assessment was appropriate, and had failed to take into account the oral and conceptual similarities in carrying out the global assessment.

For the full Opinion of the Advocate General, click here

Following a strong recent trend in parallel trade cases to require an importer to prove consent of the trade mark owner to the sale of his branded goods within the EEA, the Court of Appeal, while not purporting to change the well established law (ECJ: Zino Davidoff/Levi -v- Tesco, 2001), has recently overturned a High Court decision on the facts, finding for an importer of cigars that the facts were consistent only with an unequivocal consent on the part of the Cuban brand owner to importation.

For the full judgment of the High Court in this case, click here

The High Court has upheld a claim by a licensee against the licensor of the LONSDALE brand, claiming that the licensor, Lonsdale Sports Equipment Limited, breached the licence agreement by failing to terminate certain pre-existing licences which it had promised to do, and also by supplying LONSDALE branded goods to its Belgian subsidiary.

For the full judgment of the High Court in this case, click here

The Advocate General has given an Opinion covering issues relating to non-use, the effect of a mark being part of a "family" of marks and the effect of defensive marks. The concept of a family of marks is an interesting one, particularly the idea that the existence of a family may increase distinctiveness, i.e. as a portfolio the family is worth more than the sum of its parts.

For the full Opinion of the Advocate General, click here

The High Court has granted an interim injunction based on a restrictive covenant in a contract of employment prohibiting the employee from working for a competitor of the employer within 6 months of leaving such employment. The case provides a useful summary of the test to be applied in determining whether a non-compete clause is enforceable. It also shows that these clauses, which are generally seen as difficult to enforce, can be effective if they are properly drafted and reasonably proportionate to the nature of the information to be protected.

For the full judgment of the High Court in this case, click here

The Court of Appeal has upheld the decision of the High Court in the "Da Vinci Code" trial, finding that the judge rightly held that the Claimant had not established that a substantial part of their work "The Holy Blood and The Holy Grail" had been copied, whether in relation to the composition of the original, or the selection and arrangement of its contents. In particular, although copying had occurred, the material incorporated in the later work lay on the wrong side of the line between ideas and their expression.

For our full Law-Now on this important decision, click here

The Court of Appeal handed down its judgment in relation to an appeal against the first instance decision of the High Court which had decided that copyright in an arcade game, based on the game of pool, was not infringed by two competing arcade games, also based on the game of pool. Although the two allegedly infringing games were "inspired by" the first game, and incorporated some (but not many) similar elements, both the High Court and the Court of Appeal held that there was no copyright infringement.

For our full Law-Now on this important decision, click here

In the first application of the 4-step test to determine patentability following Aerotel/Macrossan, the High Court upheld the decisions of the Patent Office by rejecting two applications. The High Court reached its decision on the basis that the contribution in one of the applications was deemed to be no more than an advance in a computer program and had no technical effect, while the other application was deemed in essence to be a business method with no technical effect. This decision is useful for its practical application of the Aerotel/Macrossan test, particularly because it addresses the requirement in the 4^th step that the contribution must be technical.

For our full Law-Now on this important decision, click here

The Court of Appeal has upheld the decision of the High Court, albeit on different grounds, in deciding that a patent relating to credit swaps made by an employee belonged to his employer as it was made in the course of the employee’s normal duties. The High Court had erred in defining "normal duties" by reference to the initial written employment contract as contractual duties of employment evolve over time. In this case, the employee’s duties had evolved to include the credit swap patent that was the subject of dispute. It is interesting to note that this decision is the first appellate decision considering section 39(1)(a) of the Patents Act 1977, which may demonstrate either that such issues are comparatively rare, or (perhaps more likely), that employees have traditionally found such claims difficult to bring.

For the full judgment of the Patents Court in this case, 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

The original publication date for this article was 19/04/2007.