Bringing you monthly news of key developments in intellectual property law.
Trade Marks
Vovemij Verzekeringen NV v Benelux-Merkenbureau (ECJ)
The ECJ recently held that it is sufficient to consider use of a trade mark in one of the three Benelux countries (rather than in all three) for the purpose of assessing the acquired distinctiveness of that mark. It further held that in the case of a word mark in an official EU language, it is only necessary to prove acquired distinctiveness in the area of the state where the relevant language is spoken. The ECJ's decision broadly followed the Advocate-General's Opinion handed down earlier this year.
For the full judgment in this case, click here.
Lidl Belgium GmbH & Co KG -v- Etablissementen Franz Colruyt NV (ECJ)
The ECJ has confirmed the correct interpretation of Comparative Advertising Directive (Council Directive 84/450/EEC concerning misleading and comparative advertising), stating that general comparisons between baskets of goods are permitted without the need to list all products that have been compared exhaustively in the advertisement, as long as an explanation is given as to where such details may be found.
Dyson Limited v Registrar of Trade Marks (AG Opinion)
The Advocate General of the ECJ has delivered an opinion that effectively rejects an application by Dyson to register the transparent "bin" which forms part of their vacuum cleaner as a trade mark. The Attorney General considered that a functional feature which forms part of the appearance of a product was not a sign capable of being represented graphically and capable of distinguishing the goods or services of one undertaking from those of other undertakings, as required by the Trade Marks Directive. In any event, the mark was precluded from registration by the public policy limitations set out in Article 3(1)(e) of the Trade Marks Directive.
For the full text of the Advocate General's Opinon, click here.
Easynet Group plc -v- EasyGroup IP Licensing Limited (High Court)
The High Court dismissed the appeal of an opposition by Easynet to the mark EASY.COM that had been filed by the EasyGroup. The High Court also considered the test for reviewing composite marks and how a mark composed of more than one element might become more than the sum of its parts. On the facts, the hearing officer of the Trade Marks Registry had adopted the correct test and was entitled to reach the conclusion which he did, finding that the mark was neither devoid of distinctive character, nor descriptive.
Copyright
Laserdisken ApS v Kulturministeriet (ECJ)
In a comparatively rare case involving the exhaustion of copyright (rather than trade marks), the ECJ followed the Advocate General's opinion and held that Article 4(2) of the Copyright Directive was valid, which allows a copyright owner to prevent a first distribution to the public of his work in the EEA without his consent. EU Member States are therefore precluded from retaining their own national law of international copyright exhaustion, being any law which states that following first distribution anywhere in the world the copyright owner's rights are exhausted.
For the full judgment in this case, click here.
Database Rights
Cureton v Mark Insulations Limited (High Court)
The Queens Bench Division of the High Court held that where a sales agency had built up a database of its client's customers incidentally to the services it was paid to provide, in the absence of any agreement to the contrary, the rights in that database belonged to the sales agency not the client principal. The case serves as a useful reminder to make express provision in the agreement as to the ownership of any databases.
Patents
Arrow Generics Limited and Organon Laboratories Limited and Others v Norton Healthcare Limited (Scottish Court of Session)
Lord Glennie of the Scottish Court of Session delivered a judgment in a revocation of the majority of claims detailed in two UK designations of European patents on the grounds of anticipation or obviousness. The Court also refused to allow an application to amend various claims to one of the patents on the grounds that it was too late to do so as it would require the case to be reopened.
For the full judgment in this case, click here.
Unilin Beheer v (1) Berry Floor, (2) Information Management Consultancy & (3) B&Q PLC (Patents County Court)
In the Patents County Court, the defendants sought to stay an inquiry as to damages following a finding of infringement pending the outcome of an appeal of an unsuccessful opposition to the patent in the Technical Board of Appeal of the European Patent Office ("EPO"). His Honour Judge Fysh QC refused to stay the inquiry, and ruled that if the patent were revoked by the EPO the defendants could still assert in UK proceedings that the patent was invalid.
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 12/10/2006.
