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

TRADE MARKS AND PASSING OFF

Marks and Spencer plc v Interflora Inc and Interflora British Unit [2012] EWCA Civ 1501, 20 November 2012

The Court of Appeal has upheld Marks and Spencer plc’s appeal over the admissibility of evidence from respondents to a pilot survey.  In doing so, the Court has clarified that such evidence may be admissible, notwithstanding the fact that the survey from which it is derived may not be statistically reliable.  However, the circumstances in which such evidence should be admissible are narrow and the Court has indicated that judges should conduct a detailed cost/benefit analysis before admitting such evidence.

The decision also provides useful guidance on the information an applicant must supply to the court when applying to adduce survey evidence or the evidence of respondents to such a survey.

For the full text of the decision, click here.

C561/11 Federation Cynologique Internationale v Federacion Canina Internacional de Perros de Pura Raza – Opinion of Advocate General Mengozzi, 15 November 2012

Advocate General Mengozzi has recommended that the CJEU find that the proprietor of a CTM can bring an action for infringement against the proprietor of a later registered CTM and that there should be no requirement for the later registered mark to be declared invalid before such an infringement action can be decided.  The basis of this opinion is that the priority principle requires that the rights associated with an earlier registered CTM take precedence over rights established subsequently.

For the full text of the decision, click here.

Hollister Incorporated Dansac AS v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419, 9 November 2012

The Court of Appeal has overturned a decision of the Patents County Court (“PCC”) which had awarded a medical devices company only 50% of the importer’s net profits following a straightforward trade mark infringement arising from the importer’s failure to give notice of its repackaged product to the trade mark owner.

The Court of Appeal decided that failure to give notice was no different from any other trade mark infringement and that a conventional approach to the account of profits should have been taken.  The PCC had awarded the trade mark owner only half of the importer’s net profits on the basis that this represented a fair proportion, bearing in mind the extent of damage to the trade mark owner, the general principle of proportionality (given that this was breach of an essentially procedural requirement) and the need for a sufficient deterrent to others.  This approach has now been rejected.  The case also considered the extent to which a defendant may deduct a portion of its overheads from its profits, where again the Court of Appeal’s view was more favourable towards the trade mark owner.

For the full text of the decision, click here.

Phonebook of the World v OHIM, Case T-589/11, 20 November 2012

The European General Court dismissed an appeal for a declaration of invalidity of CTM registration for “pagine gialle”, meaning yellow pages in Italian.  The mark had become distinctive through use in Italy and was not descriptive or customary in the EU countries other than Italy.

For the full text of the decision, click here.

Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2012] EWHC 3074 (Ch), 2 November 2012

The Claimants’ registered Community trade mark (CTM) “NOW” was held to be invalid and therefore was not infringed by British Sky Broadcasting Group plc’s use of “NOW TV” to market a new television service.  The High Court held that the average consumer would understand NOW to be a description of the immediate nature of a television service.  Passing off claims, based on the goodwill the Claimants argued had been generated by three separate services, were also unsuccessful due to either a lack of protectable goodwill or a lack of confusion.

For the full text of the decision, click here.

PATENTS

Actavis Group HF v Eli Lilly and Company [2012] EWHC 3316 (Pat), 27 November 2012

Actavis issued proceedings in the High Court for a declaration of non-infringement of the French, German, Italian, Spanish and UK designations of a patent belonging to Eli Lilly.  Actavis’ intention was for the matter to be decided in one trial in good time for them to enter the market on expiry of Lilly’s SPC.  Lilly defended the claim on the grounds that the court did not have jurisdiction in respect of the French, German, Italian and Spanish designations of the patent and that the claim form had not been properly served.  As the validity of Lilly’s patent was not in issue, the court ruled that it did have jurisdiction in relation to a reference for a declaration of non-infringement of the UK designation of a European patent as well as the other, non-UK designations.  The court reasoned that as Lilly had accepted proceedings by consenting to service without any reservation of the right to challenge jurisdiction, it could not challenge the inclusion of the non-UK patents in the action.

For the full text of the decision, click here.

Ningbo Wentai Sports Equipment Co Ltd v Wang [2012] EWPCC 51, 9 November 2012

The Patents County Court (“PCC”) has held that the “special jurisdiction” granted under s.287 Copyright Designs and Patents Act 1988 gives the PCC jurisdiction over an equitable claim for breach of confidence associated with patent revocation proceedings.  The PCC has jurisdiction to hear and determine proceedings relating to patents or designs, or proceedings ancillary to, or arising out of the same subject matter as proceedings relating to patents or designs.  The fact that the underlying patent proceedings had ended before the parallel confidence claim did not affect this jurisdiction.

For the full text of the decision, click here.

DESIGNS

Mainetti (UK) Limited v Hangerlogic UK Limited [2012] EWPCC 42, 24 October 2012

Mainetti alleged that Hangerlogic had infringed three of Mainetti’s registered designs, all of which relate to the design of various types of hanger.  Hangerlogic contested the claim on the basis that Mainetti’s registrations were invalid.  The PCC considered the questions as to validity and infringement under two distinct legal regimes.  As Hangerlogic’s designs had been registered prior to the enactment of the Registered Designs Regulations 2001, their validity was assessed under the old law prior to 2001, whereas infringement was assessed under the new law applicable after 2001.  The PCC held that Mainetti’s designs were valid and had been infringed.

For the full text of the decision, click here.

PROCEDURE

Rugby Football Union v Viagogo Ltd [2012] UKSC 55, 21 November 2012

The Supreme Court has upheld a Court of Appeal decision granting a Norwich Pharmacal order against Viagogo Ltd.  The Order requires Viagogo to provide the details of the people who had advertised or sold certain rugby match tickets on its websites to the Rugby Football Union.

For the full text of the decision, click here.