UK: IP Snapshot - January 2010

Last Updated: 18 January 2010
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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

TRADE MARKS

Sun Microsystems Inc v M-Tech Data Ltd and Stephen Lawrence Lichtenstein, High Court, 25 November 2009

Sun Microsystems won summary judgment in relation to parallel traded disk drives bearing its registered trade marks which had originated in China, Chile and the US and been placed on the European market by the Defendants without its consent. The Court rejected defences based on competition law. The decision is being appealed.

For the full text of the decision, click here (www.bailii.org/ew/cases/EWHC/Patents/2009/2992.html).

Stella Kunststofftechnik GmbH v OHIM, EU General Court, 10 December 2009

The EU General Court (formerly the CFI) held that the existence of earlier opposition proceedings in relation to a CTM did not prevent the applicant from bringing revocation proceedings in respect of the CTM that was basis of the opposition. The General Court held that it was not apparent from the wording of Articles 50(1)(a) and 55(1)(a) that opposition proceedings brought on the basis of a mark that was still pending could influence the admissibility or the progress of revocation proceedings brought against that mark; opposition and revocation proceedings were two distinct and autonomous types of proceedings, each with their own effects, and it was possible for revocation proceedings to be brought even when opposition proceedings based on the mark to which the revocation proceedings relate have already been brought and are still pending.

For the full text of the decision, click here (http://tinyurl.com/ycaxmlc).

Trubion Pharmaceuticals Inc v OHIM, EU General Court, 15 December 2009

The EU General Court recently upheld the OHIM Board of Appeal's decision that there was a likelihood of confusion between the proposed word mark "TRUBION" and the existing "Tribion Harmonis" figurative mark for Class 5 goods.

The General Court shared the Board of Appeals's view that the word element "tribion" was the dominant part of the existing mark. It considered that the word "harmonis" was likely to be perceived only as a laudatory term and that the figurative element of the mark was fundamentally decorative in character. The Court held that, on an overall assessment, there was a certain amount of visual similarity between the marks and a very strong phonetic similarity. It concluded that, in view of the similarity between the goods in question and the marks at issue, there was a likelihood of confusion to the relevant public of end users and health professionals in the European Community.

Significantly, the General Court noted that manufacturers in the health sector (and in particular the sector of products complementing health products) very frequently market product lines within ranges bearing a particular word sign indicating the commercial origin of the goods followed by various word elements with an essentially descriptive function of the characteristics specific to that product range. In this context, the General Court considered that the term "tribion" is likely to be perceived by consumers as a sign indicating the origin of goods and "harmonis" as a laudatory term indicating a specific product within the "tribion" range.

For the full text of the decision, click here (http://tinyurl.com/yd6v63z).

Bayer Healthcare LLC v OHIM, T-277/08, EU General Court, 11 Nov 2009

The EU General Court upheld the decision of the OHIM Board of Appeal that there was a likelihood of confusion under Article 8(1)(b) between the Spanish trade mark 'CICATRAL' and the proposed Community Trade Mark 'CITRACAL'. The goods (heating salves and dietary supplements) were found to be similar. In this regard the court compared the nature and function of each of the goods and found that the function of each of these goods was the same, namely the treatment of human health problems. The signs were also sufficiently similar given the high degree of visual and phonetic similarity. The court held there was no conceptual similarity as the words were imaginary with no conceptual content to take into account. There was therefore a likelihood of confusion on the part of the Spanish public.

For the full text of the decision, click here (http://tinyurl.com/yb9b5va).

Torresan v OHIM, EU General Court, 19 November 2009

The EU General Court has upheld an OHIM Second Board of Appeal decision that the word mark CANNABIS is descriptive in respect of beer and other alcoholic beverages (classes 32 and 33), and thus invalid under Article 7(1)(c) of Regulation No 40/94 as a registered Community trade mark in respect of these classes of goods.

For the full text of the decision, click here (http://tinyurl.com/yazxsj2).

Andreas Stihl AG & Co. KG, OHIM, 30 November 2009

The OHIM Fourth Board of Appeal held that an International Registration for a colour combination trade mark for power tools in class 7 is protected in the European Community on the basis of acquired distinctiveness, thereby partially allowing an appeal from an examiner's decision rejecting such protection. Although the appeal board confirmed that the examiner had been correct in deciding that the colour mark was not in itself distinctive under Article 7(1)(b) of CTM Regulation (EC) No. 207/2009, it held that the mark had acquired a distinctive character under Article 7(3) of the CTM Regulation through the widespread use that had been made of it.
The board of appeal took into account the evidence supplied by the applicant, which included several market surveys. The evidence showed that the applicant was in fact the market leader for the power tools in question and was recognised by a specialist public, which recognised the colour combination.

For the full text of the decision, click here (oami.europa.eu/LegalDocs/BoA/2007/en/R0355_2007-4.pdf).

COPYRIGHT

Lucasfilm Ltd and others v Andrew Ainsworth and another, Court of Appeal, 16 December 2009

In July 2008, Mr Justice Mann found in part against Lucasfilm and its co-claimants, the production and licensing companies behind the original Star Wars films, in a complex and multi-jurisdictional copyright action brought against the defendant, Mr. Ainsworth, for the production of replica Star Wars "Stormtrooper" uniforms. Lucasfilm had brought claims for copyright, passing off and reverse passing off, breach of confidence, to ownership of any copyrights Mr Ainsworth might have created during the course of his activities, to enforce a US judgment previously obtained by it against Mr Ainsworth, and to enforce its US copyright directly in the English courts. Mann J found against Lucasfilm on all but its claim to enforce its US copyright directly in the UK, and its claim to entitlement to any copyrights owned by Mr Ainsworth. Both parties appealed.

The Court of Appeal has now upheld Mann J's decision on every point other than his finding that Lucasfilm could enforce their US copyrights directly in the English courts. The Court of Appeal held that the Brussels Regulation does not give rise to an international jurisdiction over copyright infringement claims, and that there were sound policy reasons for this.

For the full text of the decision, click here (www.bailii.org/ew/cases/EWCA/Civ/2009/1328.html).

PATENTS

Leo Pharma v Sandoz, Court of Appeal, 11 November 2009

The Court of Appeal rejected Sandoz Limited's appeal against Floyd J's decision in the High Court that Leo Pharma's EP Patent (UK) was valid. The case provides a timely reminder of the role of the Court of Appeal and that an appellant in a patent case must show that the High Court judge 'erred in principle'.

For the full text of the decision, click here (www.bailii.org/ew/cases/EWCA/Civ/2009/1188.html).

Gemstar-TV Guide International Inc. and others v Virgin Media Limited and other, High Court, 26 November 2009

Virgin Media has successfully defended a patent infringement claim brought against it by Gemstar TV Guide International Inc (Gemstar). Gemstar claimed Virgin Media infringed three of its patents relating to EPGs: the "Single Channel Patent", the "Favourites Patent" and the "Transfer Patent". Virgin Media denied the infringement and sought the revocation of the patents.

Justice Mann held that two of the patents were found to be unpatentable due to lack of a technical contribution and were therefore excluded from patentability. In addition, the patents in dispute were invalid for lack of novelty or inventive step and as a result, even if they were not excluded from patentability, were not infringed.

For the full text of our Law-Now update on this decision, click here (http://tinyurl.com/ybh3yxd).

Ian Alexander Shanks v Unilever plc and others, High Court, 3 December 2009

The High Court has held that the wording of section 41(2) of the Patents Act 1977, dealing with compensation to employee inventors in cases where the invention had been transferred to a company connected to the employer, could not be interpreted literally as such an interpretation could produce absurd results clearly inconsistent with the intentions of Parliament. Such transfers should be treated as being to a non-connected, arm's-length person operating in the appropriate market at the appropriate time.

For the full text of the decision, click here (www.bailii.org/ew/cases/EWHC/Ch/2009/3164.html).

Dr Reddy's Laboratories (UK) Limited v Eli Lilly Company Limited [2009] EWCA Civ 1362, 18 December 2009

The Court of Appeal has dismissed an appeal against a decision by the High Court that a patent for a drug used to treat schizophrenia was valid. The Court of Appeal agreed with Floyd J, the High Court judge, that the claimed compound was not invalidated as being anticipated by, or obvious in light of, a previous patent application which disclosed a huge general class of compounds, even though the patented compound was one of that class. The Court of Appeal followed the approach of the EPO to selection patents preferring its approach to the approach in pre-1977 Patents Act case law; in doing so, the Court of Appeal followed the trend of recent years.

For the full text of the decision, click here (www.bailii.org/ew/cases/EWCA/Civ/2009/1362.html).

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 15/01/2010.

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