This is our monthly series of updates on developments in the world of IP which should take you no longer than two minutes to read:
Exhaustion of rights and trade marks
Where a trade mark owner has assigned its trade mark rights to another party in a particular Member State, it will have exhausted its rights to prevent that party from exploiting the trade mark throughout the EEA if the owner has given the impression that it is a single global trade mark. In particular, the CJEU held that sharing control of the trade mark with the assignee would give that impression (the Red Paralela case).
Luxury goods and online sales
The CJEU has confirmed that selective distribution networks, often used to preserve the luxury image of a product and to restrict internet sales, are not in breach of competition laws provided that resellers are chosen on the basis of objective criteria of a qualitative nature and not applied in a discriminatory fashion, and that the criteria does not go beyond what is necessary (the Coty Germany case).
Evidence and trade marks
Coca-Cola were allowed to rely on evidence of use outside the EU by the applicant for an EU Trade Mark for the word Master in a script very similar to the Coca-Cola logo. The images below show use on cola bottles in the Middle East which the EU General Court said were admissible as evidence of how the applicant might intend to use the mark within the EU.
Equivalence and patents
Carr J reviewed the criteria relating to infringement by equivalence laid down by the Supreme Court in Actavis v Eli Lilly when considering infringement of one of several patents relating to genetic testing on a foetus using blood testing. In Actavis it was said that the courts should adopt “a sceptical, but not absolutist, attitude” to considering a patent’s prosecution history when considering infringement. The judge did consider the prosecution history for one of the patents in issue but concluded that it did not support the Defendants’ arguments. He also decided he would not have been able to decide the equivalence issue without expert evidence on the relevant criteria, but did not need to since he would have found that the Defendants infringed the particular claim in issue under a “normal interpretation” of it, had it been valid. However, it was found not to be entitled to the claimed priority date and therefore lacked novelty over the prior art. The judge also decided that the fact that part of the process involved analysis by a computer located in Taiwan did not prevent the process in substance being used in the UK.
Fashion and design right
In a dispute between two wedding dress designers who had appeared on the TV show My Big Fat Gypsy Wedding, one designer was found to have infringed UK design right in the front part of a wedding dress design. Applying the decision in Neptune v deVOL (where we acted for the successful Defendant), the IPEC judge found that design right subsisted in the part of the dress relied on because it was not just an arbitrary selection of "disembodied features".
Spare parts and Community Design rights
The CJEU has ruled on the meaning of the exception to Community Design infringement to allow spare parts for the purposes of repairing a complex product, such as a car, in order to restore its original appearance (the so called “repair clause”). Firstly, its application is not limited to parts which have to be a particular shape or appearance (such as a replacement car door), but can apply to parts where there may be a number of different options (in this case, wheel rims which may vary in size and colour). However, the appearance of the replacement part must be identical in order to fall within the exception from infringement. Suppliers of such replacement parts have various obligations to ensure that downstream sellers limit their sales for repair purposes only (the Acacia case).
Survey evidence and passing off
The High Court allowed survey evidence to be relied upon at trial in a passing off action, saying that any flaws in the methodology could be considered by the trial judge (Glaxo Wellcome v Sandoz).
Streaming and blocking injunctions
Arnold J has granted UEFA similar blocking injunctions against the six main ISPs to prevent unauthorised streaming of football matches to those he previously ordered in favour of FAPL, pointing out that his reasoning regarding the application of the communication to the public right had since been supported by the CJEU in the Ziggo and VCAST judgments.
Likelihood of confusion, trade marks and passing off
The mark on the right was found to be sufficiently similar to the registered trade mark on the left to infringe it in respect of identical goods, namely clothing:
The High Court also found that the above mark, and the mark below, infringed s.10(3) Trade Marks Act 1994, which applies to marks with a reputation.
The judge held that it was not necessary for the reputation to be in respect of the goods or services covered by the registration. With the three horse mark, whilst there was no likelihood of confusion, there would still be a sufficient link between the signs in the minds of the average consumer to fall within s.10(3). Applying similar reasoning, passing off was found in relation to the two horse mark but not the three horse mark.