UK: IP Snapshot – December 2009

TRADE MARKS

Frag Comercio Internacional, SL v OHIM (CFI) 11 November 2009

The Court or First Instance of the European Court of Justice rejected an application by Frag Comercio Internacional to overturn the OHIM Board of Appeal's finding that there was no likelihood of confusion between the proposed figurative mark "green by missako" and the figurative mark containing the word "misako". The CFI upheld that the term "green" and the representation of the sun were the dominant elements in the overall impression given by the proposed mark, and considered that the writing at the bottom of the mark "by missako" was nearly illegible. Accordingly, there was found to be no visual, phonetic or conceptual similarity between the signs and, therefore, there were insufficient grounds for finding a likelihood of confusion in the perception of the relevant public.

For the full text of the decision, click here.( http://www.law-now.com/fragvohim )

Wasabi Frog Ltd -v- Miss Boo Ltd & Another, High Court, 4 November 2009

An interim injunction was granted in favour of an online clothing retailer called boohoo.com to prevent a third party trading as "Miss Boo", also in clothing. Interesting use was made of arguments concerning internet key words, which the Court accepted.

For the full text of the decision, click here.( http://www.bailii.org/ew/cases/EWHC/Ch/2009/2767.html )

Application by Omega Engineering Inc to register the trade mark OMEGA in class 14 and the opposition by Omega SA, 12 November 2009

The hearing officer of the IPO dismissed the opposition by Omega SA (a Swiss company) against the registration of the mark 'OMEGA' for goods in class 14 by Omega Engineering Inc. The coexistence agreement entered into between the parties in 1984 applied. In this agreement Omega Swiss had consented to the later registration by Omega Engineering for the goods described therein. Omega Swiss was wrong to argue that they had given consent to Omega Engineering registering the mark in relation to class 9 (the International Classification of Goods and Services for the Purposes of the Registration of Marks) goods only. The agreement did not refer to class, and the reasonable person would not interpret the agreement to be limited to classes. In addition, the same goods may be registered in a number of classes.

For the full text of the decision, click here.( http://www.law-now.com/omega )

PASSING OFF

Evans and another (t/a Firecraft) v Focal Point Fires plc, High Court, 10 November 2009

In a recent ruling, the High Court held that the claimants, a partnership manufacturing and trading in stone fireplaces under the business name 'Firecraft', were entitled to summary judgement against the defendant (who used the mark "Firecraft" in connection with sale of gas and electrical fires) in respect of a claim for passing off.

This ruling follows an earlier decision by an Intellectual Property Office (IPO) hearing officer that registration by the defendant of the "Firecraft" mark was invalid under section 5(4)(a) of the Trade Marks Act 1994 (TMA) as it would have been liable to prevention by the claimants under the law of passing off. The High Court further held that that the defendant could not challenge the decision of the hearing officer due to application of cause of action estoppel and issue estoppel and also because this would be an abuse of process, thereby showing that the decisions of hearing officers are in some cases instrumental to the decisions of courts in trade mark cases.

For the full text of the decision, click here.( http://www.bailii.org/ew/cases/EWHC/Ch/2009/2784.html )

COPYRIGHT

R v Christopher Gilham, Court of Appeal (Crim), 9 November 2009

The Court of Appeal (Criminal Division) dismissed an appeal and upheld the conviction of an individual under section 296ZB of the Copyright, Designs and Patents Act ("CDPA") for the sale of "Modchips" designed to allow counterfeit video games to play on a games console. It was a matter of common sense that a person who plays a counterfeit DVD on his games console, and sees and hears copyright material, would make a copy of at least a substantial part of the game, even though at any one time the material in the console memory and on the screen and audible only a very small part of that work.

For the full text of the decision, click here.( http://www.bailii.org/ew/cases/EWCA/Crim/2009/2293.html )

Scopelight Limited and others v (1) Chief of Police for Northumbria (2) Federation Against Copyright Theft Limited, Court of Appeal, 5 November 2009

The Court of Appeal allowed an appeal by the Federation Against Copyright Theft Limited (FACT) and the Northumbria police, confirming that section 22 of the Police and Criminal Evidence Act 1984 did not prevent the police from retaining property seized from the claimants under PACE once they had decided not to prosecute them. The police had the power to determine whether it was necessary in all the circumstances that the property should be kept for investigation in connection with an offence, or for use as evidence at a trial for an offence (such as a private prosecution by FACT).

For the full text of the decision, click here.( http://www.bailii.org/ew/cases/EWCA/Civ/2009/1156.html )

PATENT / DESIGN RIGHTS

Grimme Landmaschinenfabrik v Scott (t/a Scotts Potato Machinery), High Court, 3 November 2009

Although a claimant has been successful in obtaining a judgment that the defendant infringed its patent and design rights, the defendant was also successful in bringing a counterclaim for unjustified threats. A letter written by the claimant's solicitors to the defendant's customers was not justified as it was not specific as to which of the defendant's roller designs were alleged to infringe.

For the full text of the decision, click here.( http://www.bailii.org/ew/cases/EWHC/Patents/2009/2691.html )

PATENTS

Boegli – Gravures SA v Darsail-ASP Ltd and another, High Court, 29 October 2009

The High Court has held that where a company director does more than vote at board meetings, he or she can be held personally liable for acts of patent infringement, in particular where the director was personally involved in the infringing acts.

The Court considered that the fact that the director was founder, manager and shareholder of the infringing company was not sufficient to make him personally liable for the company's actions. However, the fact that he had taken an active part in negotiations and had actually supplied infringing foil samples was considered sufficient to "pierce the corporate veil" and render him personally liable for patent infringement.

The Court also held that the supply to an investigator acting on behalf of a patentee, of a part which is an essential element of a patented invention, is not an infringement under section 60(2) of the Patents Act 1977. However, the test for threats to infringe would usually be met in these circumstances.

For the full text of the decision, click here (http://www.bailii.org/ew/cases/EWHC/Patents/2009/2690.html )

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd (Court of Appeal) 22 October 2009

The Court of Appeal has again confirmed the principle in Article 69 of the European Patent Convention that the extent of protection of a patent is given by the patent claims and has provided further guidance on interpretation of patent claims containing reference numerals

The success or otherwise of any patent infringement claim will depend on the scope of the patent and it is therefore crucial to understand how the courts interpret the claim wording to identify the boundaries of the protection. The court is mainly concerned with identifying the inventor's purpose, given the claim wording. This case is a good demonstration of the rules of interpretation applied by the court to patents, the dominant consideration being the language used in the claim. The case involved two competitor airlines, this particular battle focussing on their seats and seating arrangements for first class passengers.

For the full text of our Law-Now update on this decision, click here.( http://www.law-now.com/xc.asp?g=6F2CA03B-DFAB-412F-87B3-44DC90916386)

Medeva BV, BL, IPO, 16 November 2009

A hearing office at the Intellectual Property Office has rejected Medeva's SPC applications on the basis that for four out of five applications the basic patent did not cover the product for which protection was sought, and in respect of the fifth that the relevant marketing authorisation relied upon was granted in respect of a different set of active ingredients to the product for which an SPC was sought.

For the full text of the decision, click here.( http://www.law-now.com/medeva )

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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 10/12/2009.

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