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

PATENTS 

Warner-Lambert Company LLC v Sandoz GmbH and others [2015] EWHC 3153 (Pat), 4 November 2015 

The High Court has granted Warner-Lambert interim injunctions against both Sandoz (a generic supplier) and Lloyds (a retail pharmacy) prohibiting supply and distribution, respectively, of Sandoz’s generic “full label” pregabalin product. Warner-Lambert holds a second medical use patent for pregabalin for the treatment of pain or neuropathic pain. While there are other “skinny label” generic forms of pregabalin on the market, which cover indications other than pain or neuropathic pain, Sandoz’s product represented the first generic launch of full label pregabalin on the market.

The Court considered that, on the facts, continuing the interim injunctions (which had been granted in October pursuant to an urgent application) would create a lesser risk of irremediable harm than refusing them. In particular, the Court considered there to be a strong case for preservation of the status quo, i.e. the absence of a full label generic pregabalin product on the market. 

For the full text of the decision, please click here

COPYRIGHT 

Hewlett-Packard Belgium SCRL v Reprobel SCRL, Case-572/13, 12 November 2015 

The CJEU has considered the interpretation of the exceptions to the reproduction right contained in Articles 5(2)(a) and (b) of the Copyright Directive (2001/29/EC), which relate to reprographic copying and copying by natural persons for private use. In each case the Directive requires that rightholders are given “fair compensation”.

The CJEU held that certain activities could fall under both exceptions. Therefore, when considering the harm suffered by a rightholder in order to determine what would constitute “fair compensation” under the reprography exception, a distinction must be drawn between copying carried out by a natural person for private use and copying carried out for commercial purposes. 

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

SBS Belgium NV v Belgische Vereniging van Auteurs, Componisten en Uitgevers (SABAM), Case C-325/14, 19 November 2015 

In this preliminary ruling, the CJEU held that where a broadcaster transmits programmes by means of direct injection broadcasting to a distributor this does not, in principle, constitute a communication to the public within the meaning of Article 3(1) of the Copyright Directive. 

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

BSI Enterprises Ltd and anor v Blue Mountain Music Ltd [2015] EWCA Civ 1151, 18 November 2015 

The Court of Appeal has dismissed an appeal by BSI Enterprises Ltd and Cayman Music Ltd which sought a declaration that BSI Enterprises Ltd owned the copyright in the music and lyrics of thirteen Bob Marley songs including “No Woman No Cry”. The claim centred on the interpretation of a 1992 assignment agreement. This case clearly demonstrates the need to ensure that any assignment makes clear which rights it is assigning and, more particularly, which rights are omitted. 

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

TRADE MARKS AND PASSING OFF 

Comptroller-General Of Patents, Designs & Trade Marks and another v Intellectual Property Agency Ltd and another [2015] EWHC 3256 (IPEC), 10 November 2015 

The Intellectual Property Enterprise Court has imposed its maximum financial penalty of £500,000 in a passing off and trade mark infringement claim. The Court held that the Claimants had established all the elements of passing off, finding that there had been a misrepresentation by the defendants, Intellectual Property Agency Ltd (“IPAL”) and Mr Jonasson, that IPAL was the government intellectual property body and that the fees charged for renewals were the official fees. In assessing whether IPAL infringed the UK Intellectual Property Office’s trade mark, the Court considered that the dominant element of the marks in question were the words themselves and held that IPAL’s mark did infringe. 

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

CTM OPPOSITIONS 

Masafi Co. LLC v OHIM, Case T-248/14 and Masafi Co. LLC v OHIM, Case T-249/14, 25 November 2015 

The EU General Court has dismissed appeals against decisions of the OHIM Board of Appeal that two figurative marks should not be registered, as there was a likelihood of confusion with an earlier word mark.

The General Court found that the marks applied for were dominated by the term “masafi”. Although this term was stylised, the degree of stylisation was low and there was a high degree of visual similarity. The Court noted that as the relevant public were unlikely to attempt to pronounce the Arabic script for “masafi”, there was also a high degree of phonetic similarity between the marks. 

Masafi Company submitted that ‘masafi’ (the earlier word mark) was the name of a village in the UAE famous for its natural water sources and on this basis, the earlier mark was descriptive. However, the General Court rejected this argument, finding that the earlier mark had acquired average distinctiveness, and there was a likelihood of confusion overall. 

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

Government of Malaysia v OHIM, Case T-508/13, 18 November 2015 

The EU General Court has dismissed an appeal against an OHIM Board of Appeal decision rejecting an opposition against an application for a figurative mark. The General Court held that the opponent’s mark, which was an unregistered certification mark certifying that goods were halal and in compliance with Sharia law, had not acquired the goodwill required under UK law to demonstrate passing off, and therefore could not prevent registration of the mark applied for. 

The General Court considered that the evidence provided by the Government of Malaysia did not demonstrate that consumers genuinely knew the certification mark to the point of giving it priority over other signs present on the goods to which it was affixed, or that it influenced their purchasing decision. Although the evidence showed that the mark had been advertised and disclosed to the relevant public, it did not provide proof of the perception of it by the relevant public. 

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