PATENTS

Actavis UK Ltd and others v Eli Lilly & Co [2015] EWCA Civ 555, 25 June 2015

The Court of Appeal has overturned a decision of the High Court (Patents Court) in relation to declarations of non-infringement sought by Actavis.  The case concerns a European Patent held by Eli Lilly which relates to Lilly’s cancer drug Alimta.  Actavis was seeking declarations of non-infringement in order to launch a competing product.  In allowing the appeal by Eli Lilly, the Court confirmed that although Actavis’s proposed active ingredients did not directly infringe Eli Lilly’s patent, there was indirect infringement and therefore the declarations of non-infringement should be refused.  The declarations should also be refused in France, Italy and Spain, as there was no significant difference in this aspect of the law in those countries.  The case is set to continue, however, as the Court remitted a new issue raised by Actavis to the Patents Court for judgment.

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

Unwired Planet International Ltd v Samsung Electronics Co Limited & Ors  [2015] EWHC 2097 (Pat), 21 July 2015

The High Court (Patents Court) has ruled on an application by Ericsson to strike out allegations of breaches of Article 101 of the TFEU made by Samsung and Huawei. The claimant, Unwired Planet, had acquired various standard essential patents from Ericsson and had brought infringement proceedings against Samsung and Huawei relating to these.   Birss J struck out Samsung’s claim that Ericsson had breached Article 101 by not ensuring the transfer of an effective "FRAND" obligation to Unwired Planet, as Unwired Planet had made a FRAND commitment and the fact that it was a new one rather than a transfer of Ericsson’s FRAND obligation was irrelevant. 

However, Birss J held that both Samsung’s and Huawei’s allegations that the division of Ericsson’s patent portfolio is anti-competitive and that certain terms in the agreement transferring the patents constituted price-fixing might have a real prospect of success and should be dealt with at trial.  The High Court also rejected an application under s.9 of the Arbitration Act 1996 by Ericsson for a stay of a counterclaim brought by Samsung as, by agreeing to join the proceedings, Ericsson had taken a step which affirmed its willingness to go along with a determination by the Court of issues covered by the arbitration clause in the licence.  

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

TRADE MARKS AND PASSING OFF

The London Taxi Corporation Ltd (t/a as The London Taxi Company) v Frazer-Nash Research Ltd  [2015] EWHC 1840 (Ch), 3 July 2015

The High Court refused an application by the maker of London black cabs, London Taxi Company (LTC), to use survey evidence in respect of a claim that the defendant’s proposed “metrocab” would be passing off. This was on the basis that the survey evidence in question failed the “real value” test, as it did not deal with deception, which is the real issue at hand in a passing off case. Furthermore, the Court held that a question in the survey did not conform to the Whitford Guidelines, as it was a leading question.

Additionally, the Court held that the survey evidence would not satisfy the cost-benefit test as the costs were a substantial proportion of the total costs budget.

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

The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), 29 June 2015

The High Court has ruled that two Community trade marks (CTMs) for the words “SOFA WORKSHOP” were invalidly registered, had not acquired distinctive character in the Community after registration and were liable to be revoked for non-use, pursuant to Article 51 of the CTM Regulation (207/2009 EC). This was because, although there was extensive evidence of genuine use of the CTM in the UK in the five year period before revocation, there was very little evidence of use outside of the UK. Therefore there was not enough evidence to prove genuine use in the EU.

The judge held that if the CTMs had been validly registered and were not liable to revocation they would have been infringed by the defendant. It was also held that the defendant’s acts were enough to cause material damage to Sofa Workshop’s goodwill in the UK and there had been misrepresentation on the part of Sofaworks. Therefore, Sofaworks were found liable for passing off.

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

Logistics BV and another v Bacardi and Company Ltd and another, Case C-379/14, 16 July 2015

The CJEU has ruled that under Article 5 of the Trade Marks Directive (2008/95/EC) a trade mark owner can oppose a third party who places his branded goods under the duty suspension arrangement, after such goods have been introduced into the EEA without his consent and released for free circulation.  It distinguished the previous case of Nokia -v-HMRC which concerned goods not yet released for free circulation in the EEA. The CJEU further found that a parallel importer’s actions in importing BACARDI bottles into the EEA without Bacardi's consent, placing them under the duty suspension arrangement, then detaining them in a tax warehouse until the payment of import duties and their release for consumption, was "use in the course of trade" under Article 5(1) of the Directive.  By contrast, the mere provider of a warehouse service did not constitute “use” of the mark.

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

For a comprehensive summary on customs detention in intellectual property cases, please see our previous Law Now here.

CTM OPPOSITIONS

BH Stores BV v OHIM, Case T 657/13, 2 July 2015

The EU General Court held that there was no similarity between the goods concerned. The earlier mark covered ‘sporting articles’, whereas the mark applied for covered ‘children’s bath toys’ and ‘children’s educational and developmental toys’. The Court held that the respective goods covered by each mark had a different intended purpose, even if there was a possibility of some overlap. It followed that the goods were non-competing.

The Court also held that the nature of the goods was different, since the toys had a lower size and weight, and generally a lower price. The Court also noted that the goods were generally sold in different specialist shops or shop departments.

On account of these factors, the Court held that there was no similarity between the goods concerned and there was no likelihood of confusion.

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

Alpinestars Research Srl v OHIM, Case T 521/13, 7 July 2015

The EU General Court found that the OHIM Board of Appeal had erred in finding that there was a low degree of visual similarity between the signs in question. The dominant element of the mark applied for, ‘aster’, and the earlier mark coincide in their first three letters and in their fifth letters, which are in the same positions in the respective signs. They differ only in the presence in the earlier mark of a hyphen linking the first letter to the rest of the sign, and the vowel ‘a’ and the consonant ‘s’ placed in fourth and sixth position respectively, whereas the mark applied for contains the vowel ‘e’ in fourth position. As such, there was an average degree of visual similarity.

The Court also held that there was a high degree of phonetic similarity. Although the Court held that there was no conceptual similarity between the two marks, it found that this did not counteract the visual and phonetic similarities, as neither of the marks is capable of conveying a clear meaning to the relevant public.

On the basis of the foregoing, the Court held that there was a likelihood of confusion between the marks and annulled the decision of the OHIM Board of Appeal.

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

The Smiley Company SPRL v OHIM, Case T 352/14, 15 July 2015

The EU General Court has upheld a decision of the OHIM Board of Appeal that there would be a likelihood of confusion between the earlier word mark, “HAPPY HOURS”, and the word mark applied for, “HAPPY TIME”.

The Court held that there were similarities between the goods in Class 14, covered by the mark applied for and the services in Class 35 covered by the earlier mark. Class 14 includes “Goods in precious metals…”, whereas Class 35 consists of “Auctioneering”. The Court considered that the goods that were the subject of the auctioneering services covered by the earlier mark were identical to, or at least very similar to, the goods covered by the applied for mark.

The Court considered that there was a high degree of conceptual similarity between the marks. They both refer to a state of being over an unspecified period of time.

On this basis, the Court held that there was an overall similarity between the marks in question and there was a likelihood of confusion.

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

DESIGNS

Karen Davies Sugarcraft Ltd v Croft [2015] EWHC 2035 (IPEC), 9 June 2015

The Intellectual Property Enterprise Court has granted summary judgment in respect of the infringement of two registered designs for cake moulds. While no prior art was presented to the Court, the Court held that the defendant’s moulds were so close in similarity to the registered designs that there was a very low chance of there being prior art that would narrow the scope of each of the two registered designs to the point of no infringement. There was, therefore, no real prospect of the defendant successfully defending the claim and the Court found that the defendant’s moulds had infringed the claimant’s registered designs.

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