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

TRADE MARKS

Bernhard Rintisch v Klaus Eder, CJEU, Case C-553/11, 25 October 2012

In order to prove genuine use of a trade mark, a proprietor may rely on use of a form which is different from that registered, if the differences between the two forms does not alter the distinctive character of the trade mark.  Even if this different form is also registered as a trade mark.  Further, a proprietor is not precluded from relying on a trade mark which is registered purely as a defensive mark, as the subjective intention on registration is irrelevant.

For the full text of the decision, click here

The BIMBO SA v OHIM, CaseT-569/10, 10 October 2012

The General Court has upheld the decision of the Board of Appeal that the proposed mark “BIMBO DOUGHNUTS”, was similar to the earlier registered trade mark “DOGHNUTS”. The Court held that in assessing the likelihood of confusion the relevant public was the average Spanish consumer, and not the consumer of another Member State. Since the average Spanish consumer does not understand English very well, the word “doughnuts”, which does not exist in Spanish, is not merely descriptive.   

For the full text of the decision, click here

Societe des Produits Nestlé SA v Cadbury UK Limited [2012] EWHC 2637 (Ch)

The High Court has upheld the decision of the Hearing Officer that Cadbury UK Limited should be entitled to register the colour purple to cover, broadly speaking, milk chocolate products. Société des Produits Nestlé SA’s appeal was dismissed save that the specification was amended to relate to milk chocolate products only, rather than chocolate more generally.

For the full text of the decision, click here

COPYRIGHT

Abraham Moon & Sons Ltd v Thornber and others [2012] EWPCC 37, October 2012

The PCC held that the claimant’s design of woollen fabric called ‘Skye Sage’ was infringed by the defendants’ design for a fabric known as ‘Spring Meadow’. The defendants’ argument that it created its design independently was not persuasive and as such they failed to rebut the inference of copying.

For the full text of the decision, click here

PATENTS

MedImmune Ltd v Novartis Pharmaceuticals UK Ltd and another [2012] EWCA Civ 1234, 10 October 2012

The Court of Appeal has upheld a High Court ruling on the invalidity of a patent concerning antibody phage display. The Court of Appeal concluded that the patent was obvious in light of a conference presentation, and furthermore invalid on the basis that its first claim was not entitled to priority. The Court of Appeal particularly highlighted the importance of focusing on the statutory question of “was the invention obvious at the priority date”, rather than whether it was obvious to try.

For the full text of the decision, click here

AstraZeneca AB v. Comptroller-General of Patents, Designs and Trade Marks [2012] EWHC 2840 (pat), 19 October 2012

The High Court referred three questions to the CJEU concerning whether a Swiss marketing authorisation not granted according to the procedures laid out in the Medicines Directive was capable of constituting the first marketing authorisation.  The High Court referred these questions to the CJEU as the law in this area was unclear and had been inconsistently applied across member states.

For the full text of the decision, click here

Koninklijke Philips Electronics N.V. v DSM IP Assets B.V.

An appeals board of the European Patent Office has held that the contents of an e-mail can not be prior art, despite the possibility that the e-mail may be intercepted in transit, unless it can be proved that the contents have actually been disclosed to the public before the priority date.

The appeals board decided that unlawful interception of an e-mail would normally impose an obligation of confidence not to disclose its contents, and even lawful interception would be governed by European human rights law, protecting privacy.

For the full text of the decision, click here

DESIGNS

Herbert Neuman, Andoni Galdeano del Sel and OHIM v José Manuel Baena Grupo, SA, Joined Cases C-101/11 P and C-102/11 P, 18 October 2012

The ECJ has dismissed appeals on joined cases challenging the validity of a registered Community design, upholding the findings of the General Court.  In doing so, the ECJ has provided further guidance on the definition of the “informed user”, under the Community Designs Regulation.  The ECJ held that the informed user is not a user of average attention, but a particularly observant one.  In addition, the Court stated that, although wherever possible, the informed user will make a direct comparison between two designs in order to determine the overall impression, in some circumstances this may not be possible.  It is therefore permitted to assess the overall impression based on the informed user’s imperfect recollection of the overall impression of the designs in question.

For the full text of the decision, click here

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339 (18 October 2012)

The Court of Appeal rejected Apple’s appeal, upholding the High Court’s previous ruling that a number of different versions of Samsung’s Galaxy Tablet did not infringe Apple’s registered Community design. The High Court’s order requiring Apple to publicise the ruling in newspapers was affirmed but was altered in relation to publication on the home page of Apple’s own website as the Court recognised Apple’s genuine interest in keeping it “uncluttered”.

For the full text of the decision, click here

DATABASES

Football Dataco and Others v Sportradar GmbH – 18 October 2012

The ECJ has given its ruling on the questions referred by the Court of Appeal on sui generis database rights in the Football Dataco case. 

The Court of Appeal found that re-utilisation of a database takes place by way of a person in one member state uploading data extracted from a database protected by sui generis database right and sending it by means of a web server to a person in another member state, at their request, for storage on their computer’s memory and display on its screen.  In addition, the act of re-utilisation takes place in the Member State where the data is received.  However, in order for there to have been an infringement there must be evidence that this act of re-utilisation was intended to attract the attention of the public in the Member State, it is not enough for the data just to have been accessible in that Member State.

For the full text of the decision, click here  

ADVERTISING

New Ofcom guidance on the use of Tweets in advertising

In its latest Broadcast Bulletin, Ofcom has resolved a complaint against Channel 4 relating to an advertisement for a film which invited viewers to send in Tweets on what they thought of the film, and then broadcast the positive Tweets from viewers in a subsequent advert.  The complaint alleged that the broadcast confused viewers as to whether they were watching an impartial continuity announcement or a paid advertisement.  Although Ofcom considered that there were several aspects of the material that would give rise to confusion as to the nature of the piece, they determined the matter to be resolved as Channel 4 had introduced subsequent policy changes to ensure that similar confusion did not occur again.

For the full text of the decision, click here

For our Law-Now on the decision, click here