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

PATENTS 

Warner-Lambert LLC v Actavis Group PTC EHF and others v Secretary of State for Health[2015] EWCA Civ 556, 28 May 2015

The Court of Appeal disagreed with the High Court’s judgement that a pharmaceutical product manufacturer’s subjective intent is required for direct infringement of a Swiss second therapeutic use claim. Floyd LJ held that, instead, a manufacturer’s knowledge (including constructive knowledge) or the foreseeability that the product could be used for the patented second use was sufficient for direct infringement. This meant that the appeal against the striking out of a claim of indirect infringement was allowed. However, he agreed with Arnold J’s decision that the balance of justice was against the grant of an interim injunction. 

For the full text of the decision, please click here

T-1278/12 Method for stimulating the intestinal flora/N.V. Nutriciaof, 28 April 2015 

A European Patent Office (EPO) appeals board held that in order for a claim to qualify as a second medical use claim under Article 54(5) of the European Patent Convention, it must specify the particular therapeutic use. The claim in this case, which related to a formula for the enteric feeding of infants born by caesarean section, did not specify any therapeutic effect. The appeals board rejected the appellant’s argument that the therapeutic effect was implied on the basis that the wording of the claim limited it only to the extent that the composition had to be suitable for the enteral administration to caesarean section infants. The EPO appeals board also held that as the formula was known in the prior art, the claim lacked novelty. 

For the full text of the decision, please click here

TRADE MARKS AND PASSING OFF 

Best-Lock (Europe) Ltd v OHIM, Cases T-395/14 and T-396/14

The General Court has rejected an appeal in respect of a declaration of invalidity sought in respect of two Community trade marks (CTMs) owned by Lego. In doing so, the General Court has demonstrated the need for properly pleading one’s claim and also provided further guidance on the exclusions for shape marks. 

For the full text of the decisions, please click here and here.

dm-drogerie markt GmbH & Co. KG v OHIM, Case T-662/13, 25 June 2015 

The EU General Court upheld a decision by the OHIM Board of Appeal in finding no similarity and no likelihood of confusion between a word CTM, “DM”, and a figurative sign, being sought for registration, of a representation of the capital letter “M”. 

The Court found that, although the goods were partly identical and partly similar, the signs were visually and phonetically dissimilar. The Court was unable to conceptually compare the two signs as they both had no meaning. 

Due to this lack of similarity between the signs, the Court held that they were unlikely to confuse the relevant public. 

For the full text of the decision, please click here

Giovanni Cosmetics, Inc v OHIM, Case T-559/13, 3 June 2015 

The EU General Court held that a CTM for the word “GIOVANNI” and a figurative sign consisting of text GIOVANNI GALLI and an outline of a duck are not similar and there is no likelihood of confusion between the signs. 

The goods, in this case cleaning and cosmetic products, were held to be partly identical and partly similar and there was an average phonetic similarity between the signs. However, there was low visual or conceptual similarity between the signs. 

The Court considered that the visual similarity plays a very important role in assessing the likelihood of confusion for these particular goods. As such, it held that there was no likelihood of confusion between the signs, upholding the OHIM Board of Appeal’s previous decision. 

For the full text of the decision, please click here

AgriCapital Corp. v OHIM, Case T-514/13, 10 June 2015

The EU General Court upheld a decision by the OHIM Board of Appeal finding no similarity between the two previously registered word CTMs, “AGRICAPITAL” and “AgriCapital”, and the word mark “AGRI.CAPITAL”. This was due to the fact that the nature, intended purpose and method of use of the services covered by both of the marks were dissimilar, despite all falling under Class 36.

The previously registered signs were registered in respect of financial services, whereas the “ARGI.CAPITAL” sign was being sought for registration for real estate services. The Court held that consumers would perceive real estate agents/developers as being clearly separate from banks and financial institutions and that they offered products and services which were not substitutable.

The opponent argued that the OHIM Board of Appeal failed to examine whether the services in question were complementary. However that General Court agreed with the OHIM Board of Appeal that although real estate affairs often required financing, it was not enough to show that there was such a close link between them and financial services so as to make the relevant public think that those services may be performed by the same undertaking.

For the full text of the decision, please click here

COPYRIGHT 

R (British Academy of Songwriters, Composers and Authors and others) v Secretary of State for Business, Innovation and Skills [2015] EWHC 1723 (Admin), 19 June 2015

In judicial review proceedings, the High Court has found that it was unlawful to introduce a new exception for personal copies for private use without a compensation scheme. The exception, s28B Copyright, Design and Patents Act 1988 (CDPA), was introduced in 2014. The Court held that the Secretary of State’s economic intuitions about pricing-in were not able to answer whether pricing-in was so extensive as to render residual harm minimal or non-existent to copyright owners.

In a follow up case, Green J has held that The Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014 (SI 2014/2361) (the Regulations) should be quashed in their entirety. However, the claimants’ argument that the Regulations should be quashed ex tunc (with retrospective effect) was rejected and the quashing order was made ex nunc (with prospective effect only).

As the Regulations were quashed, Green J held that there should be no reference to the CJEU at present as the Court would be at risk of sending a hypothetical reference to the CJEU and of the CJEU declining to answer the questions posed.

It remains to be seen what will happen to the private copying exception in the UK, but it is unlikely to be resolved in the near future.

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

For the full text of the follow up decision, please click here

Motivate Publishing FZ LLC and another v Hello Ltd [2015] EWHC 1554 (Ch), 4 June 2015

The High Court has dismissed a claim for specific performance of a licence agreement to publish the Middle East edition of Hello! magazine. The Court rejected the claimants’ arguments that an agreement to renew the licence agreement had been reached through a series of emails between the parties. Although the Court accepted that the email from the defendants could amount to an offer to renew the agreement, the claimants had failed to accept these terms in their reply, instead proposing counter terms.

The claimant also sought relief under the law of proprietary estoppel. While the Court considered that proprietary estoppel could, in principle, be available to prevent the defendant from denying the existence of a licence of intellectual property rights, on the facts a sufficiently concrete representation that the licence would be renewed had not been made. The claimants’ claim was dismissed in its entirety.

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