January is widely considered to be named after a Roman god, Janus, who had two faces, which allowed him to look to the future and to the past. If he were casting his eyes over intellectual property (IP) law today, he would see a great many things worthy of capturing his attention. Last year, 2014, saw so many IP highlights it was hard to keep up, while 2015 promises to bring many more.
Looking back: IP highlights of 2014
A great many IP developments took place in 2014 and space prevents us from mentioning them all here. Hence, we present a brief run-though of some selected IP highlights of 2014 from our UK and European perspective.
The EPO’s U-turn on divisional applications: Patent applicants had cause to celebrate on 1 April 2014, when the European Patent Office (EPO) reversed its rules relating to the filing of divisional applications, so that a divisional application can once more be filed any time whilst the parent application is still pending (i.e. not granted, withdrawn or refused).
- criminal sanctions for copying registered designs;
- changes to design ownership for commissioned design work;
- allowing private use of unregistered design right; and
- introducing a non-binding design opinions service at the UK Intellectual Property Office (IPO).
UK Patent Box survives German challenge in modified form: On the eve of the G20 summit the UK and German governments released a joint statement detailing reforms to the UK’s Patent Box regime. While the proposed changes to Patent Box represented something of a compromise, several positive messages emerged for innovative UK businesses.
Intellectual Property Enterprise Court (IPEC) in UK going from strength to strength: The IPEC (formerly the Patents County Court) continues to prove its worth and handed down several notable judgments in 2014. To take but one example, Kohler Mira Ltd was successful in enforcing its UK unregistered design rights relating to a shower against Bristan Ltd.
Hyperlinks on websites: take care not to link to a new public: The Court of Justice of the European Union’s (CJEU) ruling in Svensson (C-466/12 ) concerning the use of hyperlinks and copyright infringement attracted a great deal of comment and was named copyright case of the year by the IPKat blog.
In summary, the CJEU ruled that placement of content on an open website makes that content freely available to the general public, regardless of whether that public actually looks at the content. Thus, a third party providing a link to that same content does not make the content available to a “new” public, since anyone with access to the internet could have looked at the content in the first place. Accordingly, there should be no copyright infringement in providing a link to public content.
Glee Club- no laughing matter for 20th Century Fox: The Birmingham, UK based Glee Club comedy venue, in true David and Goliath fashion, successfully sued 20th Century Fox for trade mark infringement in relation to the popular TV show, “Glee”. As a result, the TV show will have to be re-branded, although its new name has not yet been revealed.
Perhaps Asda should have gone to Specsavers (and asked for consent): One long-running trade mark battle to be concluded in 2014 was between Asda and Specsavers. The Court of Appeal issued a decision in which Specsavers successfully defended the validity of one of its trade mark registrations, despite not showing use of the mark as such, but instead showing use through a different mark.
Other IP cases to hit the headlines in 2014, included:
- Cadbury losing its bid to register its particular shade of purple as a UK trade mark, bringing a 10-year battle with rivals Nestlé to an end;
- The Court of Appeal’s decision to order a retrial in the latest instalment in the trade mark dispute between Interflora and Marks & Spencer concerning the use of the word “interflora” as a key word in internet searches for flower delivery services; and
- Trunki winning the right to appeal a Court of Appeal decision to the UK’s Supreme Court. The case concerns the scope of protection of Trunki’s registered designs for ride-on children’s suitcases. Earlier in 2014, the Court of Appeal decision found that the registered designs in question had not been infringed by a competitor’s product, reversing the decision at first instance.
Looking forwards: some possible IP highlights of 2015
In addition to the introduction of the aforementioned designs opinion service by the UK IPO and the UK Supreme Court’s decision in the Trunki case, here are a few other things we will be keeping an eye on in 2015.
Further progress towards an EU patent and a Unified Patent Court (UPC): The EU patent and the UPC are slowly getting closer to becoming a reality. A 17th draft of the UPC’s Rules of Procedure was published last autumn, and Benoit Battistelli, President of the EPO, has said that he believes the first EU patent could be delivered by the EPO in 2016. We anticipate further progress being made in 2015, but would be surprised if the EU patent and UPC came into being as soon as 2016. Such a prediction would seem to be somewhat optimistic given the slow rate of progress to date and the number of issues which still need to be worked out.
Ongoing unrest at the EPO: Tensions between workers and management at the European Patent Office have been running high. Workers at the EPO went on strike in March, April, November and December 2014, calling for more freedom of communication for unions and objecting to recent and proposed reforms to working conditions and career progression. Also, a member of the Boards of Appeal was suspended, raising questions in some quarters about the judicial independence of EPO Boards of Appeal. The issue of judicial independence has caught the attention of the UK and other governments of EPO member states and is expected to be considered by the EPO’s Administrative Council in March 2015. It will be fascinating to see how these issues develop and what compromises (if any) are reached between the various parties involved.
Questions on partial priority being referred to the EPO’s Enlarged Board of Appeal: Questions relating to partial priority and the issue of “poisonous” divisionals will shortly be referred to the EPO’s Enlarged Board of Appeal. It will be interesting to see the final form of the questions that are referred. However, it could be a good while before the Enlarged Board gets round to considering the questions and, hopefully, resolving the issue.
Of course, predicting the future is a very tricky business and this year will doubtless bring its fair share of IP surprises.