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.
