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

PATENTS

Phil & Ted's Most Excellent Buggy Co Ltd v TFK Trends for Kids GmbH and others [2014] EWCA Civ 469, 16 April 2014

The Court of Appeal upheld the decision of the Intellectual Property Enterprise Court that a patent for a buggy was obvious over a Chinese utility model.  The appeal was based on the assertion that the judge had not properly addressed the evidence in reaching his conclusions. The Court of Appeal disagreed and held that in relation to each point, the appropriate evidence had been considered. The expert witness for the appellant had not been able to provide evidence on common general knowledge at trial as he had not been a buggy designer at the time. The appellant argued that since the judge had not expressly referred to their expert’s evidence he had erred in law. However the Court of Appeal was satisfied that the finding of obviousness was justified based on the remaining evidence. It is vital when selecting an expert to ensure that they are able to provide evidence on all aspects of the case, especially the common general knowledge where obviousness is an issue.

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

TRADE MARKS AND PASSING OFF

Asos plc v OHIM, Case T-647/11, 29 April 2014

The General Court dismissed an application for annulment in its entirety and held that there was a likelihood of confusion between the word marks ASOS and ASSOS because firstly, neither of the marks had a meaning and the conceptual comparison was neutral, and secondly, there was no peaceful co-existence of the two marks in the relevant territory, the European Union.

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

Beyond Retro Ltd v OHIM, T 170/12, 30 April 2014

The EU General Court has found a likelihood of confusion between BEYOND RETRO (the earlier mark) and BEYOND VINTAGE, overturning a decision of the OHIM Board of Appeal.   Given the first words of the marks and the case law stating that consumers were more likely to take note of words placed at the beginning, the Board of Appeal had been wrong to find that the degree of similarity between the signs was low. 

The Board of Appeal had also been wrong to find that there was no conceptual similarity between the signs. Although there was a slight difference in the strict meaning of the words "vintage" and "retro", the marks, when considered as a whole and in relation to the relevant goods, will generally be perceived by the relevant public as referring to a style of clothing based on a recollection of the past.

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

Pico Food v OHIM, Case T-623/11, 9 April 2014

The EU General Court has ruled that there was no likelihood of confusion under Article 8(1)(b) of the Community Trade Mark (CTM) Regulation (207/2009/EC) between a figurative mark featuring a cow and various word elements applied for in respect of goods in Class 30, including sweets and chocolate, and three earlier German marks featuring a cow and various word elements, registered for identical goods. The case considered the scope of protection accorded to figurative trade marks that have been registered in black-and-white.

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

COPYRIGHT

Hi Hotel HCF SARL v Spoering, Case C-387/12, 3 April 2014

The CJEU ruled that in proceedings for copyright infringement, where there are several putative perpetrators of damage allegedly caused to the rights-holder, Regulation 44/2001/EC on jurisdiction (the “Brussels Regulation”) does not allow a court, within which the defendant did not act, to have jurisdiction of the case.  However, the ECJ held that the Brussels Regulation does allow a court to have jurisdiction on the basis of the place where the alleged damaged occurred, provided that the damage might occur within the jurisdiction of that court. 

As such, where a claimant established outside a member state delivers a copyright work to a defendant also outside that member state, the courts of that member state may still have jurisdiction to hear the claimant’s claim for copyright infringement where the delivery gives rise to the reproduction and distribution of the work and therefore the possibility that damage might occur in the member state.

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

UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and another, Case C-314/12, 27 March 2014

The CJEU has provided further guidance on the meaning of the term “intermediary” for the purposes of Article 8(3) of Directive 2001/29, the InfoSoc Directive. The guidance suggests that national courts should adopt a broad definition of “intermediary” to ensure that ISPs that are in a position to prevent an infringement can be ordered to do so.

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

CONFIDENTIAL INFORMATION

Lloyds TSB Insurance Services Ltd and another v Shanley [2014] EWCA Civ 407, 10 April 2014

The Court of Appeal has upheld the decision of the High Court that the owner of the copyright in a piece of software had succeeded in his claim for copyright infringement against Lloyds and Halifax.  Although the copyright owner had been persistently and repeatedly dishonest throughout the proceedings, this was not fatal to his claim as a whole.

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

Shanks v Unilever BL O/512/13, 17 December 2013

The IPO has decided that, on balance, sensitive information provided by an employer as evidence in an employee compensation claim under section 40 of the Patents Act 1977 should remain confidential and not open to public access.

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