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

TRADE MARKS AND PASSING OFF

Lonsdale Sports Limited v Erol [2013] EWHC 2965 (Pat), 4 October 2013

Lonsdale successfully appealed against the registration of a trade mark by Erol on the basis that such registration would be contrary to section 5(3) of the Trade Marks Act 1994. The High Court held that Erol’s mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of Lonsdale’s marks. Whilst Lonsdale failed in its argument that the registration was likely to cause confusion because the marks were similar and registered for identical goods, Norris J agreed that use of Erol’s mark would dilute the Lonsdale brand and erode the distinctiveness of the mark.

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

Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, 4 October 2013 and J W Spear and Sons Ltd and others v Zynga Inc [2013] EWCA Civ 1175, 4 October 2013

The Court of Appeal has provided welcome guidance on the degree of certainty required for a mark with variable elements to be registrable. In two decisions, unrelated on the facts but with common legal issues to be resolved, the Court of Appeal emphasised the need for trade marks to comply with the first two requirements contained in Article 2 of the Trade Mark Directive (2008/95/EC), especially that “a sign” must be capable of being represented graphically.

The use of the word “predominant” in the accompanying description to the trade mark in the Cadbury case, and the multitude of various permutations possible from a reading of the accompanying description in the Mattel case, led the Court of Appeal to hold that the graphic representations of the marks were not sufficiently clear, precise or objective to satisfy Article 2 of the Trade Mark Directive.

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

For our Law-Now publication on the decisions, please click here.

Dimian AG v OHIM, Case T-581/11, 23 October 2013

The EU General Court has upheld the OHIM Board of Appeal’s decision that in invalidity proceedings in respect of a figurative community trade mark containing the words “Baby Bambolina” the evidence did not show that there had been use of a sign of more than mere local significance under Article 8(4) of the CTM Regulation (207/2009/EC). The Court confirmed that under Article 8(4) the sign relied on must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local. Use had to be demonstrated by objective evidence rather than by means of probabilities or suppositions.

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

Thomson Ecology Ltd v Apem Ltd [2013] EWHC 2875 (Ch), 24 September 2013

The High Court has awarded an application for summary judgment in connection with a claim for passing off associated with the registration of two domain names and the registration of a company name. The defendant proceeded to dissolve the company after assigning the domain names to the claimant. The High Court held that the defendant had committed passing off and was in breach of his fiduciary duty. 

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

Bocacina Ltd v Boca Cafes Ltd and others [2013] EWHC 3090 (IPEC), 14 October 2013

The Intellectual Property Enterprise Court held that the defendants’ use of the name ‘Boca Bistro Café’ for their Bristol restaurant constituted passing off of the claimant’s ‘Bocabar’ restaurant.  The Court considered that substantial goodwill and reputation attached to ‘Bocabar’ (albeit limited to Bristol and the surrounding area) and that there was a real likelihood that a significant number of people would be confused into thinking there was a connection between the two businesses.  The Court also held that the defendants’ trade mark registration for ‘Boca Bistro Café’ was invalid under section 5(4) of the Trade Marks Act 1994.  Further, the court considered that the claimant’s decision to ‘wait and see’ if significant confusion resulted from the new name of the defendants’ restaurant - ‘Bica Bistro Café’ - did not give rise to an estoppel to bringing a future complaint in respect of the new name.

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

PATENTS

Sumitomo Chemical Co Ltd v Deutsches Patent und Markenamt Case C-210/12, 17 October 2013

The ECJ has held that an emergency marketing authorisation (MA) granted for a plant protection product under Article 8(4) of Directive 91/414/EEC cannot be used as the basis for a supplementary protection certificate (SPC) application.  There is a lack of functional equivalence between an emergency MA and a standard MA, which would make it inappropriate to grant an SPC.  In addition, the Court held that an application for an SPC could not be based on a “future” MA that had not yet been granted at the time the SPC application was made.

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

Nestec SA and others v Dualit Ltd [2013] EWHC 2737 (Pat), 5 September 2013

The High Court has held that a third party is not entitled to inspect documents exhibited to a witness statement. Notwithstanding the fact that the third party may have a legitimate interest in using such documents, the Court does not have the jurisdiction to order their disclosure.

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

HTC Corporation v Nokia Corporation [2013] EWHC 3247 (Pat), 30 October 2013

The High Court considered and rejected an implied licence defence raised by HTC in a patent infringement claim brought by Nokia in relation to a patent for a circuit component used in mobile phone chips which Nokia licensed to Qualcomm.  Qualcomm sold the mobile phone chips to HTC which used them in their handsets.  HTC argued that this use was not an infringement of the Nokia patent because it was invalid on grounds of lack of novelty; and if the patent was valid that HTC had an implied licence based on the licence between Qualcomm and Nokia. The High Court held that the patent was valid and that the licence defence failed; Qualcomm could not grant HTC rights which Nokia had not granted in the licence, even if HTC was not aware of any licence restrictions.

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

COPYRIGHT

Peter Pinckney v KDG Mediatech AG, Case C-170/12, 3 October 2013

The ECJ has delivered a preliminary ruling addressing the issue of jurisdiction in copyright infringement proceedings where the defendant was domiciled in a different jurisdiction to that of the court first seised.  The Court held that if the copyright is protected in the territory of the court first seised, that court has jurisdiction to hear the dispute provided that the harmful event occurred within that jurisdiction.  Evidence of this harmful event was the fact that the claimant was able to access a website selling the infringing material (a CD) within the territory of the court first seised.  Importantly, simply being able to access the website was sufficient.  In relation to copyright infringement, there is no requirement for the website to target consumers in that jurisdiction.

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

B4U Network (Europe) Ltd v Performing Right Society Ltd [2013] EWCA Civ 1236, 16 October 2013

The Court of Appeal held that a clause in a 2004 agreement between two music composers and their collecting society, Performing Right Society Limited (the Society), pursuant to which the composers agreed to transfer to the Society “the rights which […] you [the composers] may acquire or own whilst you remain our member”, transferred to the Society copyright for music which the composers wrote for a film in 2008. The Court rejected the argument that the composers’ rights to the music vested in the film producers pursuant to the commissioning agreement for the music, finding that the wording in clause 2 of the 2004 agreement clearly includes anything which the composer ‘may’ own or acquire, and therefore included any future works.

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