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

PATENTS

Actavis Group PTC EHF and another v Boehringer Ingelheim Pharma GmbH & Co. KG, Case C-577/13, 12 March 2015

In answering questions referred by the High Court relating to the grant of a second supplementary protection certificate, the CJEU has held that where a basic patent includes (i) a claim to a product comprising an active substance which constitutes the sole subject matter of the invention for which a certificate has already been granted, as well as (ii) a subsequent claim to a product comprising a combination of that active substance and a substance known from prior art, the patent holder may not obtain a second supplementary protection certificate covering that combination. It is, however, possible, if a patent protected several different products, that the holder might be able to obtain several supplementary protection certificates in relation to each of those different products, provided that each of those products were protected by that basic patent. 

For the full text of the decision, please click here

Otsuka Pharmaceuticals Company Limited, BL O/098/15 4 March 2015 

Otsuka Pharmaceutical Co., Ltd applied for a six month extension to the period of protection provided by a supplementary protection certificate. The certificate concerned an active ingredient in the medicinal product marketed by Otsuka under the name Abilify, used to treat schizophrenia and bipolar disorder. Article 28 of the Paediatric Regulation, which relates to medicines for children aged 0 to 17 years, applied in this case. It requires an applicant for an extension to file a statement by the competent authority that the studies outlined in an agreed paediatric investigation plan have been completed in compliance with the plan. 

The hearing officer refused Otsuka’s application on the grounds that Otsuka had not shown compliance with the agreed paediatric investigation plan as the studies described in the plan were not completed at the time of application, nor at the time of expiry of the certificate. It was held that issues relating to an application for extension must be dealt with before the supplementary protection certificate expires. 

For the full text of the decision, please click here

TRADE MARKS AND PASSING OFF 

Naazneen Investments Ltd v OHIM, Case T-250/13, 18 March 2015

The EU General Court upheld the Board of Appeal's decision in a revocation action that there had not been genuine use of the Community trade mark SMART WATER for beverages under Article 51(1) of the Community Trade Mark Regulation (CTM Regulation) (207/2009/EC). The Court confirmed that evidence proving genuine use must take into account the market and class for which the mark is registered. In this case, as the mark was for a class of goods involving mass consumption, the number of bottles of water sold and the value of the transactions was too modest to be considered genuine use.

Further, any legitimate reasons for non or limited-use must be independent of the trade mark proprietor’s control. In this case, the trade mark proprietor retained responsibility for the arrangement of alternative manufacturing of the product carrying the mark after the original bottles were contaminated by a third party manufacturer. This was a commercial difficulty rather than a legitimate reason for non or limited-use of the mark.

For the full text of the decision, please click here

Iron and another v Unilever NV, Case C-125/14, 24 March 2015

The Advocate General has provided an opinion on establishing the reputation of a Community trade mark where the mark is used and known only in a part of the Community. In particular, the Advocate General opined that use in one Member State may be sufficient to establish a reputation in other jurisdictions. However, to oppose a national application, the Community trade mark proprietor must still demonstrate that the application would take unfair advantage of, or be detrimental to, the reputation or distinctiveness of the earlier mark.

For the full text of the decision, please click here

LS Fashion, LLC v OHIM, Case T-41/12, 27 February 2015

The EU General Court upheld the OHIM Board of Appeal’s decision that there was sufficient visual, phonetic and conceptual similarity to cause a likelihood of confusion under Article 8(1)(b) and Article 42(2) and (3) of the CTM Regulation between a Community trade mark application for L’WREN SCOTT and earlier rights over the Spanish trade mark LOREN SCOTT. Both the earlier mark and the mark applied for covered class 25, specifically clothing. 

For the full text of the decision, please click here

The Royal County of Berkshire Polo Club Ltd v OHIM, Case T-581/13, 26 March 2015

Annulling a decision of the OHIM Board of Appeal, the EU General Court has upheld an opposition to registration of a figurative mark in respect of "whips, harnesses and saddlery". In respect of the remaining goods in Class 18 and other classes to which the decision relates, the appeal was dismissed. 

The marks were found to be similar and the goods to be identical, meaning that a likelihood of confusion existed, except with regard to "whips, harnesses, and saddlery". The Court held that such products are more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, and thus the weak aural similarity was weakened further. As a result, there was no likelihood of confusion concerning these goods. 

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

Intermark v OHIM, Case T 384/13, 18 March 2015

An opposition by The Coca-Cola Company of the registration of a figurative mark by another cola manufacturer was upheld. The EU General Court dismissed an appeal by Intermark in its entirety as there was visual, phonetic, and conceptual similarity between the marks, and they were for identical goods. Particular emphasis was placed upon the visual similarity, as both marks depicted ‘white cursive script on a red background’. 

For the full text of the decision, please click here

Bayer Intellectual Property GmbH v OHIM, Case T-227/13, 27 February 2015

The EU General Court found that the mark INTERFACE, applied for by Bayer, was similar and likely to cause confusion with the mark INTERFOG, relied on by Interhygiene GmbH. There was found to be average visual and phonetic similarity and a certain conceptual difference between the mark. However, the goods to which the marks related were identical, and, in order to avoid all likelihood of confusion, this must be offset by a high degree of difference between the marks. 

For the full text of the decision, please click here

Bial-Portela & Ca, SA v OHIM, Case T-366/11, 3 March 2015

The applicant applied for the mark ZEBEXIR, which Bial-Portela opposed, arguing that it was similar to their mark ZEBINIX. The opposition was originally rejected and the subsequent appeal was dismissed. The EU General Court however found, in contradiction to the Board of Appeal, that there was an average degree of visual similarity between the marks due to the common first part of the words (“zeb”). In further contradiction of the Board’s decision, the Court held that there was a certain degree of phonetic similarity as each mark was composed of three syllables, the first of which was identical ("ze") and the second ("be" and "bi"), although different, was close in sound. Thus, the Court felt that consumers could believe that goods designated by the marks come from the same undertaking or economically linked undertakings, and therefore annulled the Board’s decision. 

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

Nissan Jidosha KK v OHIM, Case T 572/12, 4 March 2015

Nissan applied for renewal of a Community trade mark in respect of some of the goods and classes for which it was registered. OHIM granted the renewal and informed Nissan that the registration under classes not covered by the application for renewal had been removed from the register. Nissan subsequently attempted to renew the mark in respect of the classes which had been removed from the register and OHIM refused to do so. Nissan appealed this decision.

The General Court held that a partial renewal of a mark in some classes does not, by inference, constitute a partial surrender of the mark in respect of the goods and services not covered by the renewal. However, proprietors are not entitled to make successive partial renewals of the same mark. Further, a renewal during the six month grace period following the expiry of a mark is only permissible if no renewal request was submitted during the six month period preceding the expiry.

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

Pinterest Inc v Premium Interest Ltd and another [2015] EWHC 738 (Ch), 24 March 2015

In a dispute between social media site Pinterest and defendants who claimed to have a prior right to the PINTEREST name, the High Court refused to grant a stay of English passing off proceedings in circumstances where there were concurrent Community trade mark opposition proceedings. The Court considered its powers to stay proceedings as set out by the Court of Appeal in a patent infringement case, IPCom GMbH & Co KG v HTC Europe Co Ltd [2013], concluding that a number of factors here favoured continuing with the passing off proceedings, namely: commercial certainty, the possibility of settlement and, in particular, the likely timetable for the conclusion of the English proceedings.

For the full text of the decision, please click here

COPYRIGHT 

Copydan Båndkopi v Nokia Danmark A/S, Case C 463/12, 5 March 2015

The CJEU ruled on a number of issues concerning the exemption for private copying set out in Directive 2001/29/EC, in particular the topic of fair compensation for the copyright holder, as prescribed by Article 5 of the Directive. The Danish court referred a number of questions to the CJEU, all but one of which were answered. In particular, the CJEU provided guidance on how the concept of fair compensation should apply to multifunctional media (i.e. those that can be used for both private copying and other purposes), and the legality of distinguishing between detachable media and integrated components for the purposes of fair compensation. The CJEU also confirmed that compensation is not payable where the prejudice caused to rightholders is minimal, although it did not provide guidance on what this minimum threshold of harm would be, instead leaving this to be determined by the Member States.

While the private copying exception came into force in the UK last year through the Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014, the UK has not implemented an accompanying private copying levy. Therefore, this decision is currently of limited application in the UK.

For the full text of the decision, please click here

C More Entertainment AB v Linus Sandberg, Case C-279/13, 26 March 2015

Following a referral from the Swedish Supreme Court in relation to whether Article 3(2) of the InfoSoc Directive covered the live streaming of sporting fixtures on the internet, the CJEU held that Member States can extend broadcasters’ right of communication to the public under Article 3(2)(d). This Article currently does not extend beyond protecting interactive on-demand transmissions. Read in conjunction with the Rental Directive, the CJEU considered that this was possible, provided that any extension does not undermine the protection of copyright in that Member State. 

For the full text of the decision, please click here