UK: IP Snapshot - November 2008

TRADE MARKS

R v Boulter (Gary), Court of Appeal, 7 October 2008

The Court of Appeal dismissed an application for leave to appeal against conviction for criminal trade mark infringement under s. 92 of the Trade Marks Act 1994 (the 'TMA'). The conviction related to counterfeit DVDs and CDs bearing the logos of EMI and other companies on the packaging. The court rejected the defence that the material bearing the trade marks was of such poor quality that there was no likelihood of public confusion as to the trade origin of the goods. The court considered the meaning of trade mark use under s. 10 of the TMA, and the differing judicial interpretation of this point in the cases of R v Johnstone and Arsenal Football Club plc v Reed.

For the full text of the decision, click here.

TIM The International Music Company AG, TTV Tonträger-Vertrieb-2000 GmbH v OHIM, CFI, 23 October

The CFI rejected an appeal in relation to an application for a declaration of invalidity against the word mark PAST PERFECT, confirming that the mark was sufficiently distinctive and was not descriptive. The case provides a useful reminder of the assessment of marks on descriptive/distinctive grounds and illustrates that many marks may need to be considered on both aspects.

For the full text of the decision, click here.

R v Wendy Fair Markets & others Ltd and others, Court of Appeal Criminal Division, [2008] EWCA Crim 2459, 16 October 2008

The first conviction of a market operator for money laundering because it accepted rent from stallholders who sold counterfeit goods has been overturned. The convictions of Wendy Fair Markets and two of its directors were quashed because the original jury summing-up had been defective.

The Court of Appeal found the summing up had left the jury confused, and the defendants may have been convicted because of perceived failures in the market's management, rather than because they were guilty of specific charges.

PATENTS

Thorn Security Ltd v Siemens Schweiz AG [2008] EWCA Civ 1161

The Court of Appeal reversed the decision of the trial judge to find that a patent was not infringed, disagreeing with the trial judge's findings of fact.

The court also overturned the first instance ruling that s68 of the Patents Act 1977 applies only to consensual bilateral transactions. It held that a purposive construction was required, and that on this basis, s68 must apply to all transfers of ownership.

For the full text of the decision, click here.

Dr Reddy's Laboratories (UK) Limited v Eli Lilly Company Limited [2008] EWHC 2345

The High Court found a patent relating to the chemical compound olanzapine (a widely prescribed anti-psychotic drug used in the treatment of schizophrenia) to be valid in light of a Markush patent (i.e. a patent claiming a chemical class formula) as nothing in the prior art specifically disclosed olanzapine.

For the full text of the decision, click here.

Les Laboratoires Servier and another v Apotex Inc. and others, 9 October 2008

The High Court set out an approach on how to value damages for a cross-undertaking given in respect of a patent that was later held to be invalid. Damages had to be assessed in relation to the conditions of the UK pharmaceutical market and by looking at various scenarios. This is an important decision as patentees have been increasingly seeking injunctions. This is the first assessment of compensation to a generic manufacturer who had been kept out of the 'at risk' market by an injunction.

For the full text of the decision, click here.

Symbian Limited v Comptroller General of Patents, Court of Appeal, 8 October 2008

The UK Court of Appeal has handed down a judgment opening the way for broader computer software patents in the UK. This decision held that computer software would be patentable where there is a technical contribution even if that contribution is within the computer and not an external effect.

For the full text of our Law-Now update, click here.

COPYRIGHT AND DATABASE RIGHTS

Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg (ECJ, Case C-304/07, 9 October 2008)

The European Court of Justice has said the Database Directive will protect database makers against the unauthorised "extraction" of material even when that material has not been literally copied and pasted without adaptation. In a broad interpretation of the question of what constituted unauthorised "extraction" of database contents under the Database Directive, the ECJ said this could include the acts of a person who consults a database on-screen and assesses its merits before reproducing certain parts of it.

It is irrelevant to the meaning of "extraction" how, in practice, the data is transferred, such as whether the contents are copied by a technical cut and paste process, or whether they are manually copied. Whether the data is arranged differently in its new medium to in the original database is also unimportant. What is important, rather, is whether the transfer of data is of either a "substantial part" of the database, or of "insubstantial parts" which were copied so repeatedly or systematically that effectively a substantial part of the contents was reconstructed.

For the full text of our Law-Now update, click here.

Magical Marking Limited and another v Holly and others, High Court, 16 October 2008

Following a "raid" made on a company's premises by a disgruntled former director of a company, who engaged an IT consultant to accompany him and copy all of the company's business records, the High Court has upheld claims of copyright and database right infringement against the IT consultant (the claimant having already secured summary judgment against the former director in respect of the same acts of infringement). However, the consultant succeeded in a Part 20 claim against the former director on the basis of the former director's breach of a warranty that he had the authority to carry out the infringing acts.

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 20/11/2008.

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