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

PATENTS

Schutz (UK) Ltd v Werit (UK Ltd) Supreme Court, 13 March 2013

The Supreme Court has provided helpful guidance on the distinction between “making” and “repairing” in the context of direct infringement of a product patent (section 60(1)(a) Patents Act 1977). Whether an activity constitutes merely repairing a product is a question to be determined by considering all the relevant factors of the case. Whether the part replaced constitutes part of the inventive concept of the patent is just one of the factors to be considered. The case also provides further clarification (obiter) on the interpretation of the cost sanction provisions in section 68 of the Patents Act 1977.

For the full text of the decision, click here

TRADE MARKS AND PASSING OFF

FAGE UK Limited & anr v Chobani UK Limited & anr, High Court, 26 March 2013

The Greek producer and UK distributor of Total Greek yoghurt have succeeded in an extended passing-off action against Chobani, the producers of a US-manufactured yoghurt that it had begun marketing in the UK as Greek yoghurt. The court considered that there was sufficient goodwill in the trade name Greek yoghurt as consumers believed that it came from Greece which made it, in some way, special. Chobani had carried out market research and had been advised that it could only market its product as Greek yoghurt if it was produced in Greece, regardless of the manufacturing process. The court held that Chobani’s decision to market its product as Greek yoghurt therefore constituted a material misrepresentation that led to an erosion of the distinctiveness of the label Greek yoghurt and a permanent injunction was granted preventing Chobani from marketing its product as such.

For the full text of the decision, click here

W.S. Foster & Sons Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18, 21 March 2013

In proceedings on passing off before the Patents County Court, it was found that the defendant retailer failed to fulfil the conditions for the defence of honest concurrent use. The defendant sought to rely on what it claims to be the concurrent goodwill of its ultimate parent company, a company based in the US, which purchased the goodwill of a UK-based business in 1964. The parent company did not conduct any business with customers from the UK from the period starting 1964 until 2005. This was held to be fatal for the defendant’s attempt to rely on the defence of honest concurrent use as the Court found that even any goodwill acquired in 1964 would have been lost over time. The Court rejected the defendant’s argument that residual goodwill could be expected to survive 48 years with no use.

There is currently no publically available judgement on this case.

Majtczak v Fen Shen Technology Co Ltd and OHIM [2013] EUECJ Case C-266/12, 7 February 2013

The ECJ has upheld the General Court’s annulment of a decision by the Board of Appeal rejecting an application for invalidity of Majtczak’s registration on grounds of bad faith. Majtczak appealed on the grounds that the court had wrongly determined that his trade mark was invalid and that he had acted in bad faith as it had failed to take into account all relevant criteria when assessing bad faith. The ECJ confirmed that the court had not made a finding of bad faith but had annulled OHIM’s decision on the grounds that the evidence did not justify a finding of bad faith either way.

For the full text of the decision, click here

El Corte Inglés, SA –v– Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Case T-571/11, 20 March 2013

The General Court has upheld a decision by the First Board of Appeal dismissing an action against the application of an opposition to the registration of the CTM “Club Gourmet” by Groupe Chez Gerard. The opposition, made by El Corté Inglés, was originally rejected and the decision was upheld by the Court of Appeal. The marks “Club Gourmet” and “Club del Gourmet en el Corté Inglés” were said to be overall, visually dissimilar, in no way phonetically similar and have a weak degree of conceptual similarity. The General Court stated that the earlier mark was described as an “advertising sentence” and as such, did not allow any comparison with the goods designated by the “Club Gourmet” mark applied for.

For the full text of the decision, click here

Aveda Corporation v Dabur India Limited, 18 March 2013, High Court

Mr Justice Arnold has overturned a decision of a UKIPO hearing officer that the sign DABUR UVEDA was insufficiently similar to the sign AVEDA to give rise to a likelihood of confusion, even in respect of identical goods. Arnold J held that the hearing officer had failed to apply the ECJ’s judgment in Medion v Thomson correctly, and in particular the doctrine that, notwithstanding the general principle that a sign is to be assessed as a whole, in a composite mark consisting of a company name plus another element, the other element may still have an independent distinctive role in the composite sign sufficient to give rise to a likelihood of confusion.

For the full text of the decision, click here

Case T-498/10, David Mayer Naman v OHIM, 8 March 2013

The General Court dismissed the applicant’s appeal against the decisions of the Cancellation Division and the First Board of Appeal on the annulment of the registered CTM in classes 18 and 25. The General Court highlighted that failure to bring a request for proof of use under Article 57(2) before the Cancellation Division meant that the applicant could no longer request such proof. Further, it was held that the marks contained inherent phonetic and visual similarities; the uncommon surname Mayer and use of similar length of the first names were held to be visually similar and the inclusion of “&” was not sufficient to dispel likelihood of confusion.

For the full text of the decision, click here

COPYRIGHT

EMI Records Ltd and others v British Sky Broadcasting Ltd and others [2013] EWHC 379 (Ch), 28 February 2013

The High Court has ordered six internet service providers (ISPs) to block access to three file-sharing websites (KAT, H33T and Fenopy) under section 97A of the Copyright, Designs and Patents Act 1988 in an application by the claimant record companies. This is the third significant High Court decision in two years ordering ISPs to block file-sharing websites and demonstrates the perceived effectiveness of this route for rights-holders. Users of the websites had infringed the claimants' copyright by copying their sound recordings and communicating the works to the public. The website operators were also in breach of the right of communication, had authorised others to infringe and were jointly liable for the infringements committed by users.

For the full text of the decision, click here

ITV Broadcasting Ltd and others v TV Catchup Ltd, CJEU, Case C-607/11, 7 March 2013

On a reference from the UK the CJEU has confirmed that live internet streaming of television programmes without a licence from the broadcaster will be a copyright infringement. The infringing act of “communication to the public” included re-transmission of programming to an audience which could already lawfully receive the programming via their television set. It was irrelevant whether or not the streaming service was profit-making or a competitor of the broadcaster.

For the full text of the decision, click here