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

PATENTS 

Positec Power Tools (Europe) Limited and other v Husqvarna AB [2016] EWHC 1061 (Pat) Positec

Birss J has refused to make an order for disclosure on the issue of obviousness in a claim for revocation of a patent covering the guidance system for robotic lawnmowers.  In doing so, he has differed in his approach to the approach adopted by the Court of Appeal in Nichia v Argos [2007] EWCA Civ 741 on the basis that that decision is no longer a binding authority in light of the amendments to CPR Part 31.  The case provides some interesting guidance on the factors that the court will consider in making this assessment and highlights the cost-conscious approach of IPEC in such matters.

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

TRADE MARKS AND PASSING OFF

Simba Toys GmbH & Co. KG v European Union Intellectual Property Office (EUIPO) Case C‑30/15 P

The Advocate General has delivered an opinion in the appeal by Simba Toys against the General Court’s decision that the Rubik’s Cube trade mark was valid.  The Advocate General argues the Court took the wrong approach to Article 7(1)(e) of Regulation 207/2009. This is the Article that specifically deals with objections to shape trade marks.  Under this Article trade marks which result from the nature of the goods themselves or are necessary to obtain a technical result are not registerable.  This is for public policy reasons to prevent trade marks being used to create an indefinite monopoly over certain inventions. If the Advocate General’s opinion is followed by the court then the Rubik’s Cube trade mark will be declared invalid.

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

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455, 25 May 2016 

The Court of Appeal has dismissed an appeal brought by Twentieth Century Fox that the UK system of registering series marks is incompatible with EU law.  The appeal on this point of law was brought by Twentieth Century Fox in proceedings concerning their infringement of Comic Enterprises Ltd’s two GLEE marks.  The Court found that trade marks registered as a series formed a bundle of individual but similar trade marks which are registered under a single application number and which each fulfilled the relevant Sieckmann requirements that a trade mark should be clear, precise, self-contained, accessible, intelligible, durable and objective.

This was the last point of appeal before the Court of Appeal for Twentieth Century Fox, although it has already indicated that it may bring an appeal to the Supreme Court.

For the full text of the decision, please click here

R v Secretary of State for Health ex parte British American Tobacco (UK) Ltd and others [2016] EWHC 1169 (Admin), 19 May 2016

Four of the world’s largest tobacco manufacturers applied for judicial review of the decision to introduce plain packaging for tobacco products.  They argued that the introduction of a requirement for plain packaging amounted to expropriation of their intellectual property rights, breached their rights to quiet enjoyment and possession of their property under the ECHR, and violated the principle that EU trade marks should be consistent across the community.  In addition they argued that the plain packaging legislation would not have its desired effect, and that it was therefore disproportionate, because the same objectives could be achieved in other ways.  The judge comprehensively dismissed all the arguments and upheld the plain packaging legislation, holding that the measures did not amount to expropriation and that the government’s action was proportionate to its public health objectives.  The judge also refused to award any compensation for the restriction on use of the tobacco manufacturers trade marks.

For a fuller discussion of the legal implications please click here.

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

Skyscape Cloud Services Ltd v Sky Plc & Ors [2016] EWHC 1340 (IPEC) (08 June 2016)

The High Court has dismissed the claimant’s application for a declaration that their business name ‘Skyscape’ did not infringe the registered trade mark ‘Sky’ belonging to the defendants Sky Group. In particular, the court found that the claimants had failed to discharge the burden of proving that their use of the mark ‘Skyscape’ created no likelihood of confusion with the trade mark ‘Sky’; that this use was not detrimental to the distinctive character of the earlier well-known mark; and that no unfair advantage was taken of Sky’s reputation.  The case is a useful indication that, while declarations of non-infringement are in principle available in the context of trade marks, the burden of proving non-infringement falling on the claimants for a declaration of non-infringement will not be lightly discharged. 

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