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

PATENTS 

Rovi Guides Inc v Virgin Media Ltd and others [2015] EWCA Civ 1214, 26 November 2015 

The Court of Appeal has dismissed Rovi’s appeal against the decision of the Patents Court that specific claims of a patent relating to the ability of a viewer to access programme information on their television set were invalid for lack of inventive step. Rovi appealed on the basis that the construction of the claim in question by the Patents Court was too broad. The Patents Court should have instead followed Rovi’s narrower construction, which in turn would not have resulted in a finding of obviousness. Concurring with the Patent Court’s judgement, the Court of Appeal concluded that the drafting of the claim in dispute was general in nature and as such there was no justification for substituting it with more specific language as argued by Rovi. 

For the full text of the decision, please click here

TRADE MARKS AND PASSING OFF

Shoe Branding Europe BVBA v OHIMCases T-63/15 and T-64/15 

The General Court has rejected two appeals against decisions of an OHIM Board of Appeal that parallel stripes affixed to particular positions on sports shirts and trousers were unregistrable for lack of distinctive character under Article 7(1)(b) of Regulation 207/2009, and therefore could not be registered as Community Trade Marks. This was on the basis that these patterns were simple and ordinary. 

The Court held that an average consumer would not inevitably perceive any simple geometric shape on sportswear as a trade mark. This was despite the applicant producing evidence that sportswear manufacturers do in fact use simple geometric shapes as trade marks.

For the full text of the decision, please click here and here

Envirotecnic v Gutterclear UK Ltd [2015] EWHC 3450 (Ch), 8 December 2015 

The High Court has dismissed an appeal against a decision of the IPO dismissing an application for a declaration of invalidity of a trade mark. The mark applied for was a figurative colour mark for “GUTTERCLEARUK” (the “Trade Mark”). The Appellant (Envirotecnic), who had made the application relying on its earlier Community Trade Mark and grounds of bad faith, submitted that the Hearing Officer had made material errors when dismissing the application. The Appellant’s earlier CTM was the word mark “GUTTER-CLEAR”. 

In particular, the Appellant contended that the Hearing Officer had not appreciated the overwhelming conceptual similarity between the marks. While the Court acknowledged that the Hearing Officer had erred in concluding that the conceptual differences between the marks were significant enough to matter, the Court nevertheless held that there was insufficient similarity between the Trade Mark and the CTM for there to be a likelihood of confusion. The Court placed particular weight on the colours used in the Trade Mark, which it cited as the dominant distinctive element of the mark. 

For the full text of the decision, please click here

Sony Computer Entertainment Europe Ltd v OHIMCase T-690/14, 10 December 2015 

The EU General Court has partially revoked a figurative Community Trade Mark containing the word “Vieta”, on the basis that it had not been put to genuine use under Article 51(1) of Regulation 207/2009. The registered owner of the trade mark had been using the mark in Spain regularly, in respect of some of the goods for which it was registered, but in a varied form from that in which it had been registered. The General Court considered whether the differences between the mark as registered and the mark as used commercially had any effect on the distinctive character of the mark. The court explained that the purpose of Article 51(1) is to allow some variations to be made to a trade mark in its commercial exploitation, but the court emphasised that the variations must not alter the distinctive character. In this case, the variations were only found to affect the figurative elements of the mark which were deemed to be ancillary to the overall impression. As a result the court held that the mark had been put to genuine use for certain classes of goods and upheld the decision for partial revocation. The appeal was dismissed. 

For the full text of the decision, please click here

CTM OPPOSITIONS

Hikari Miso Co. Ltd v OHIM, Case T-751/14, 11 December 2015 

The EU General Court has agreed with the OHIM Board of Appeal that there would be a likelihood of confusion between the applied for word mark HIKARI and the earlier UK trade mark of the same word. 

The Court found there was a low degree of similarity between the goods. There were some clear similarities in that both sets of goods were food items that form a part of Japanese cuisine. However, as the existing mark covered rice which is a product used in Europe outside of Asian cuisine and is a foodstuff used for nourishment that takes a solid form, whereas the miso products covered by the applied for mark were for flavouring and come in a range of other forms, the similarity between the goods was overall low. Nevertheless, as the marks were identical this would mean there was still a likelihood of confusion and the mark was refused. 

For the full text of the decision, please click here

CareAbout v OHIM, Case T -356/14, 16 December 2015 

The EU General Court has found there would be a likelihood of confusion between the applied for word mark KERASHOT and an existing figurative mark containing the word Kerasol, upholding the decision of the OHIM Board of Appeal. 

The goods covered are identical (hair lotions and hair preparations). In respect of the similarity of the marks, the Court held that there was above average phonetic similarity between the marks. The “kera” at the beginning of each word would be the main point of attention for consumers. Therefore, there would be an above average degree of phonetic similarity even for Spanish consumers (the relevant public) who speak English and who correctly pronounce “shot”. For Spanish consumers who do not speak English, the phonetic similarity will be higher if those consumers pronounce the “sh” the same as they pronounce the letter ‘s’. Similarly, the court concluded that there would be an average degree of visual similarity. Conceptually, there was no similarity. In conclusion, the court held that the visual and phonetic similarities of the mark would be likely to confuse consumers and as a result the mark was refused. 

For the full text of the decision, please click here.