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

PATENTS

Merck Canada Inc and another v Sigma Pharmaceuticals plc [2013] EWCA Civ 326, 18 April 2013

The Court of Appeal is to refer questions to the CJEU on the interpretation of the “Specific Mechanism” under the EU Accession treaties of 2004 and 2007 relating to the importation of pharmaceutical products from accession states, which is an exception to the usual rules on freedom of movement of goods across the EEA.

For the full text of the decision, click here

International Stem Cell Corporation v Comptroller General of Patents [2013] EWHC 807 (Ch), 17 April 2013

To establish whether the ECJ's guidance in Brüstle should be distinguished on the facts, the High Court has referred a question to the ECJ as to whether unfertilised human ova developed by parthenogenesis and therefore incapable of developing into human beings fall within the definition of “human embryos” under the Biotechnology Directive as, if so, they are excluded from patentability.

For the full text of the decision, click here

TRADE MARKS & PASSING OFF

Colloseum Holding AG v Levi Strauss & Co, Case C-12/12, 18 April 2013

The CJEU held that genuine use of a trade mark within Article 15(1) of the Community Trade Mark Regulation (207/2009/EC) can be satisfied where a registered trade mark, which has been registered as a result of becoming distinctive due to its use with another composite mark, has only been used through that other composite mark. This allows trade mark owners to rely on evidence of genuine use in combination with, or within another mark if the mark in dispute had acquired its distinctiveness through such use.

For the full text of the decision, click here

Interflora Inc and another v Marks & Spencer plc [2013] EWCA Civ 319, 5 April 2013

In the ongoing disputes about the admission of survey evidence, and following Justice Arnold’s application of the Court of Appeal’s first ruling on this issue, the Court of Appeal has ruled that Justice Arnold failed to apply the correct test in deciding whether to permit the inclusion of survey evidence.

In doing so, the Court of Appeal has made it abundantly clear that the circumstances in which survey evidence and witness statements of survey participants will be admitted are narrow. In particular, an applicant must demonstrate that the evidence is likely to be of real value.

For the full text of the decision, click here

Luna International Ltd v OHIM, Case T-454/11, 19 April 2013

The General Court has dismissed an appeal of a decision of the OHIM Board of Appeal in which an unsuccessful applicant for invalidation of a registration argued that the evidence of use put forward by the trade mark owner was inadequate because no single piece of evidence demonstrated use of the mark at the appropriate time. The General Court held instead that it was entitled to take all of the evidence together, on which basis use was established.

For the full text of the decision, click here

Continental Bulldog Club v OHIM, Case T-383/10, 17 April 2013

The General Court upheld OHIM and the Board of Appeal’s decisions that CONTINENTAL should be refused registration for being descriptive and lacking distinctive character.

For the full text of the decision, click here

In the matter of applications 2587152 and 2587390 by News Group Newspapers Ltd and consolidated oppositions 102998 and 103008 by NCJ Media Ltd, BL O-155-13, 16 April 2013

The Intellectual Property Office has rejected applications to register trade marks including the words SUN ON SUNDAY for newspapers and magazines, and various services including advertising and travel agency, following oppositions based on passing off and an earlier trade mark SUNDAY SUN registered for newspapers for sale in the north east of England.

For the full text of the decision, click here

DATABASES

Executive Grapevine International Ltd v Wall and others [2012] EWHC 4152 (Ch) (12 November 2012)

The High Court granted summary judgment in a claim for database right infringement in relation to a database put up for sale and sold on eBay. The court found that the rights had been infringed by their sale, even though sale itself is not a specifically restricted act in the Directive.

For the full text of the decision, click here

COPYRIGHT

Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd and others [2013] UKSC 18, 17 April 2013

The Supreme Court is to refer to the ECJ the question of whether the mere viewing of copyright material on the internet could amount to copyright infringement. The Supreme Court’s view was that normal browsing benefited from the exemption covering temporary acts of reproduction (Article 5 (1) of the Copyright Directive (2001/29/EC).

The decisions of both the High Court and the Court of Appeal had expressed doubts over whether browsing was in fact covered by the exemption. However, the Supreme Court noted that both these decisions had since been superseded by subsequent rulings of the ECJ on related issues. Therefore, although the Supreme Court felt that browsing would be covered under the exemption, given the transnational dimension and the important implications the decision would have for millions of non-commercial users of the internet across the EU, they decided to refer the question.

For the full text of the decision, click here