UK: IP Snapshot - September/October 2009

Last Updated: 23 October 2009
Article by Nick Beckett, Isabel Davies and Tom Scourfield

TRADE MARKS

Lilly Icos LLC & Others v 8pm Chemists & Others, [2009] EWHC 1905 (Ch), 31 July 2009

The claimants applied for and obtained a preliminary injunction relating to parallel imported goods, which was later discharged when the Court of Appeal decided that the goods did not infringe the claimants' trade marks and that no injunction was warranted. As part of the injunction application the claimants were obliged to give a cross undertaking in damages to the defendants to compensate for any loss suffered should the injunction later be overturned. Here the High Court considered how to quantify those damages. It decided that the claimants were jointly liable to compensate the defendants (who had lost their business in Turkey) for loss of profits and rejected the claimants' arguments that ordering payment would be against public policy.

For the full text of the decision, click here.

Nude Brands Limited v Stella McCartney Limited and others, High Court, Case No: HC09C02715 20 August 2009

The High Court refused to grant an interim injunction to Nude Brands Limited ("NBL"). The claimants had alleged that the defendants would be infringing "NBL's" trade mark for the word "NUDE" by applying the sign "STELLANUDE" to perfume products. Mr. Justice Floyd decided that on the balance of injustice the potential harm to the defendants should the court grant the injunction was greater than would be suffered by the claimant were the court to refuse it. The financial consequences to the defendants in delaying the launch of their product (the wheels of which has already been set in motion) were great, the likelihood of actual confusion between the products in the market place was minimal and NBL had already licensed it's mark NUDE in relation to a range of products that were closer to their core business (skincare) than the present product without putting quality control mechanisms in place.

For the full text of the decision, click here.

Bambino Mio Limited v Cazitex N.V [2009] EWCA Civ 922, 29 July 2009

The Court of Appeal upheld the High Court's finding that the sign, "Bambineo" used in the sale of nappies, did not infringe the trade mark, "Bambino Mio", registered for use on nappies. The High Court had assessed whether there was any likelihood of confusion between the marks, and had correctly considered the factors relevant to the assessment of confusion as summarised in the case of Julius Sämann ltd v Tetrosyl [2006] ("Sämann ") , namely the visual, aural and conceptual similarity of the marks. However, the judge had referred to an additional Sämann factor, which is only relevant in cases where the defendant and claimant's goods are similar not identical (not the case here). Nevertheless, this additional factor did not form the basis of the court's decision; it had merely been used as a cross-check. Accordingly, the Court of Appeal upheld the finding that there was no likelihood of confusion and therefore no infringement.

For the full text of the decision, click here.

Aceites del Sur-Coosur SA v Koipe Corporacion SL and Office for Harmonisation in the Internal market ("OHIM") Case C-498/07, 3 September 2009

The European Court of Justice ("ECJ") has upheld a European Court of First Instance of the European Communities ("CFI") decision that there was a "likelihood of confusion" between two figurative marks for olive oil. The Opposition Division and the Board of Appeal of OHIM had previously ruled that the figurative elements of the mark, consisting essentially of an image of a woman seated in an olive grove, had only a weak distinctive character. They had also concluded that the marks were not phonetically similar and that the conceptual link relating to the origin of goods was also weak so there would be no "likelihood of confusion".

However, the CFI and ECJ overturned this decision, confirming that a more holistic approach should be taken when assessing "likelihood of confusion". Courts should take into account all factors relevant to the mark as a whole, rather than simply taking one element of a composite trade mark and comparing it with another mark. Consumers, who often notice the overall visual image of a mark and do not tend to separately analyse its composite parts. Consequently, in this case, it was permissible to place greater importance on the figurative elements of the mark, which were deemed similar, rather than on the words.

For the full text of the decision, click here.

Zino Davidoff SA v Bundesfinanzdirektion Südost, ECJ, Case C-302/08, 2 July 2009

The ECJ confirmed that Council Regulation (EC) No 1383/2003 concerning customs action against suspected IP infringing goods is to be interpreted as allowing the holder of an internationally registered trade mark, designating the European Community, to secure action by the customs authorities in all Community Member States, not just the Member State in which the application for action is lodged, just like the proprietor of a CTM.

For the full text of the decision, click here and enter the case no. C-302/08.

Hipp & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Case T-221/06, 16 September 2009

The Court of First Instance (CFI) upheld an OHIM Board of Appeal decision that there was a likelihood of confusion between the word mark BEBIMIL and the earlier word mark BLEMIL. As some of the goods protected by the earlier mark were identical with and others similar to those in respect of which the trade mark application was rejected and having taken into account the visual and phonetic similarities between the marks, which, contrary to the applicant's assertion, were not counteracted by conceptual differences, given that the marks at issue, taken as a whole, did not have any specific meaning, the Court considered that OHIM's Board of Appeal was correct in concluding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 between the marks at issue, at the very least among general public.

For the full text of the decision, click here.

Google France and ors v Louis Vuitton Malletier and ors (Advocate General), C-236/08, C-237/08 and C-238/08, 22 September 2009

Advocate General Poiares Maduro decided in favour of Google's controversial AdWords system, which permits advertisers to purchase competitors' trade marks as keywords in order to trigger sponsored links in search results.

The Advocate General's Opinion is aimed at ensuring, (in his own words), "that the legitimate purposes of preventing certain trade mark infringements do not lead to the prohibition of all trade mark use in the context of cyberspace".

The key findings are as follows:

1. The offer and selection of keywords which result in a link being displayed does not of itself constitute an act of trade mark infringement.

2. The Trade Mark Directive does not enable the proprietors to prevent registration or use of keywords in generating links (although the actual advertisements displayed could do).

3. It makes no difference if a mark is a mark with a reputation - the extended form of protection is not of assistance.

4. The provider of a paid keyword service cannot be considered to be an information society service in the context of the e-Commerce Directive.

Importantly, the Opinion does not consider whether the text of the advertisements displayed from keywords could amount to trade mark infringement, only the process of registering such keywords and causing such advertisements to be displayed from search enquiries.

For the full text of our law-now update on this important opinion, click here.

W L Gore & Associates GmBH v Geox, [2009] EWCA Civ 794, 29 July 2009

The Court of Appeal has upheld a decision of the High Court in which two Geox patents for breathable waterproof shoes were held to be valid and in which the High Court had granted Gore a declaration of non-infringement for one patent but not the other. This case turned entirely on the true construction of the main claims of the respective Geox patents and on Gore's product and process description for two of its proposed shoes given pursuant to section 71 of the Patents Act 1977. The Court of Appeal, like the High Court, criticised Gore's product and process description because it described the variants in its shoes in too general terms. In his judgment, Jacob LJ stated it would be better to spell out in detail first a particular and specific product or process and then to itemise separately and clearly each possible variant in respect of which the party concerned wanted a declaration.

For the full text of the decision, click here.

(1) Zeno Corporation (2) Adept Scientific PLC v (1) BSM-Bionic Solutions Management GmbH (2) Riemser Arzneimittel AG, [2009] EWHC 1829 (Pat), 29 July 2009

In the context of a patent dispute in relation to a handheld device for heat treatment of different ailments, the High Court considered that the true purpose of a letter sent by German patent attorneys to UK retailers had been to persuade the retailer to stop selling the device and not to seek technical information to determine an infringement claim. In such circumstances, the sole purpose of the letter could not be to enquire as to whether the patent had been infringed, so would not fall within one of the exemptions to threats for patent infringement.

The case demonstrates that even an implied threat of infringement can be actionable, and is a reminder to practitioners outside the UK that letters addressed on a pan-European basis can fall foul of local rules, and care should be exercised to seek local advice on cross-border matters.

For the full text of the decision, click here.

Wake Forest University Health Sciences and others v Smith & Nephew Plc and another [2009] EWCA Civ 848, 31 July 2009

The Court of Appeal has reversed the decision of a deputy High Court judge that claims of a patent for a medical device for treating wounds were not obvious over cited prior art. The appeal court held that the trial judge had made an error of principle in analysing the evidence, and that he had not properly applied the Pozzoli steps for assessing obviousness. However, the court upheld the trial judge's finding that claim one of the patent was anticipated.

For the full text of the decision, click here.

Astellas Pharma Inc v Comptroller-General of Patents, [2009] EWHC 1916 (Pat), 31 July 2009

It is a condition of the grant of an SPC that the pharmaceutical product in respect of which the SPC is sought must be "protected by a basic patent in force". The High Court has held that, where a patented compound has been the subject of a marketing authorisation only in combination with another product, and that combination was not expressly disclosed in the basic patent, no SPC will be available. In particular, it appears that the word "protected" in Article 3(a) of the Regulation should be construed as meaning "disclosed", and not merely "covered", so that if the patent on which the application is based does not disclose the combination, the combination is not to be regarded as "protected by a basic patent in force". However, the judge expressed some doubt as to whether this construction was correct, so the way appears to be open for an appeal and a question to the EPO.
For the full text of the decision, click here.

DATABASE RIGHTS

First Conferences Services Ltd and another v Richard Bracchi and another [2009] EWHC 2176 (Ch). Case No: HC09C02108, 26 August 2009

The court considered a dispute between a former employee and his company and a claim for infringement of database rights.

The Court held that Richard Bracchi (RB) had attempted to pass off his new business as that of his previous employer, First Conferences (FC). The Court also held that RB had infringed FC's database rights by extracting a substantial amount of information from FC's databases in which FC had invested considerable time and expense.

For the full text of the decision, click here.

IP and Insolvency

Butters & Ors v BBC Worldwide Ltd & Ors [2009] EWHC 1954 (Ch), 20 August 2009

The High Court held that clauses concerning intellectual property rights in a licence, which terminated the licence upon the insolvency of one of the members of the licensee's group, were contrary to public policy. The licence formed a substantial part of the value of the licensee. The terms of the licence and Joint Venture Agreement (JVA) were such that upon the insolvency of a joint venture partner (or the parent company of a joint venture partner) the JVA and the termination clauses in the licence meant that the solvent joint venture partner could effectively force the other partner to transfer its shares in the joint venture vehicle for a knock-down price in order to reflect the loss of the licence. The court held that this scenario would deprive the creditors of the insolvent joint venture partner of the value of the licence and were therefore contrary to public policy and found to be void.

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 22/10/2009.

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