TRADE MARKS AND PASSING OFF
Fage UK Ltd and another v Chobani UK Ltd and another [2014] EWCA Civ 5, 28 January 2014
The Court of Appeal has upheld the judgment of Briggs J under the doctrine of extended passing off that Chobani, by marketing a yoghurt made outside Greece as “Greek yoghurt”, had passed its products off as being made in Greece, the phrase “Greek yoghurt” having a particular meaning to a substantial proportion of relevant consumers meaning (among other things) that the product was made in Greece. The Court of Appeal also rejected an argument under Council Regulation (EU) 1151/2012 (the “Regulation”) that the only form of protection available to a geographic indication was under the Regulation and that the phrase therefore could not be protected by the law of passing off.
For the full text of the decision, please click here.
Order of the court in Getty Images (US) Inc v OHIM, Case C-70/13 P, 12 December 2013
The Court of Justice of the European Union (“CJEU”) has dismissed an appeal against the EU General Court (“GC”) decision to reject an application to register the sign "PHOTOS.COM" as a Community trade mark (“CTM”). The GC had held that the sign was devoid of distinctive character, contrary to Article 7(1)(b) of the CTM Regulation (207/2009/EC). The CJEU agreed with this view, considering an allegation that the GC had failed to appraise the sign as a composite whole unfounded. The CJEU also held that, once the GC had found that the sign was devoid of distinctive character, it had no duty to go on to examine whether it was also descriptive (as per Article 7(1)(c)). Finally, it rejected an argument that OHIM should have accepted the application because it had accepted two earlier applications for the same mark for similar and identical goods and services. The case demonstrates that it is still difficult to obtain trade mark registrations for domain names consisting of common terms due to a lack of distinctiveness.
For the full text of the decision, please click here.
OHIM v riha WeserGold Getränke GmbH & Co. KG, Case C 558/12 P, 23 January 2014
The Court of Justice of the European Union has upheld an appeal by OHIM, establishing that if the court or opposition division has already found that the marks in question are dissimilar, it is not necessary for the court or opposition division to consider the effect of an earlier mark’s acquired distinctiveness in respect of the likelihood of confusion.
For the full text of the decision, please click here.
Société Des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch), 17 January 2014
This case concerns Nestlé’s appeal against the decision to refuse its application for a three-dimensional trade mark for the four-fingered Kit Kat and Cadbury’s cross appeal against the decision to allow the registration for “cakes” and “pastries”. Mr Justice Arnold has referred questions to the CJEU with respect to the test for acquired distinctiveness and the exclusion for shape marks that are necessary to obtain a technical result. The CJEU’s response will inevitably have a significant impact on the future of shape marks in the UK.
For the full text of the decision, please click here.
PATENTS
AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40, 28 January 2014
The Court of Appeal has reversed the decision of the first instance judge in the Patents County Court (as it then was) on an issue of added matter. The issue was whether a feature of the claims which disclosed a wider class of the feature than could be found in the body of the patent application, is invalid for added matter. The court held that claims can be more general than the specific embodiments described in the body of the patent without being invalid for added matter. The law only prohibits the addition of new matter into the claims. The case demonstrates that issues of added matter can involve some fine distinctions.
For the full text of the decision, please click here.
Astrazeneca AB and Astrazeneca UK Ltd v KRKA and Consilient Health Ltd [2014] EWHC 84 (Pat), 24 January 2014
The High Court has considered on what basis damages should be granted to a generic manufacturer after an interim injunction against it was discharged. The claimant, Astrazeneca, had provided a cross-undertaking in damages at the time the injunction was granted. The injunction prevented the defendants from launching a competitor drug for almost one year, by which time a number of other similar generic products had entered or were about to enter the market, depriving the defendants of the “first mover” advantage. However, the parties were in dispute as to the financial significance of the loss of this advantage. The Court was required to assess the “counter-factual scenario”, i.e. what would have happened had the defendants been able to launch the product at the original date, and in doing so resolved a number of issues in dispute. However, the final damages calculation was left to be agreed between the parties.
For the full text of the decision, please click here.
COPYRIGHT
Nintendo Co Ltd and others v PC Box Srl, Case C-355/12, 23 January 2014
Following a referral from the Milan District Court, the CJEU has ruled on questions relating to the technological measures used to prevent the playing of third party games on games consoles. The CJEU provided guidance in relation to the criteria which should be applied by the national court when assessing the scope of the legal protection against circumventing technological protection measures within the meaning of Article 6 of the Copyright Directive (2001/29/EC), noting that any such measures must be proportionate and should not prohibit devices which have a commercially significant purpose or use other than to circumvent the technological protection measures.
For the full text of the decision, please click here.
