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

PATENTS

Glenmark Generics (Europe) Limited and another v The Wellcome Foundation Limited and another [2013] EWCHC 148 (Pat,) 7th February 2013

The High Court upheld a claim by Glenmark Generics (Europe) Limited and Generics UK Limited that Wellcome’s patent for a combination of two anti-malarial drugs in the ratio of 5:2 is invalid for being obvious. A presentation given by a clinical research physician employed by Wellcome nine months before the priority date disclosed the combination of drugs but not the ratio. The court found that it would have been obvious to the skilled team to conduct dosage tests on the combination disclosed in the presentation and reach the ratio claimed. The court dismissed arguments that the skilled team would have been deterred by concerns about profitability of the drugs or criticism of the presentation.

For the full text of the decision, click here.

IPCom GmbH & Co Kg v HTC Europe Co Ltd and others [2013] EWHC 52 (Pat), 24 January 2013

In proceedings for determination of the royalty rate for a FRAND licence for a standard essential patent which was held as valid and infringed, the defendants (Nokia and HTC) were required to disclose confidential licences that they contended were relevant to the determination.

The Claimant, IPCom, wanted this information to be disclosed to a number of individuals, including two individuals who ran IPCom. It was held that allowing those individuals who work inside the business and are so closely connected with the business to see such information would provide them with a competitive advantage in negotiating licences as they would not be able to avoid using the information they learned. However, disclosure was allowed to an external lawyer as he was under professional obligations of confidence and signed a confidentiality undertaking. It was said that confidential information could not be unlearned, and even if a confidentiality undertaking was given, the information would drive the course of negotiations.

For the full text of the decision, click here.

TRADE MARKS AND PASSING OFF

Federation Cynologique Internationale v Federacion Canina Internacional de Perros de Pura Raza, Case C561/11, 21 February 2013

The CJEU has found that the proprietor of a CTM can bring an action for infringement against the proprietor of a later registered CTM, and there is no requirement for the later registered mark to be declared invalid before such an infringement action can be decided. The effect of this is to call into question the defence previously available to the holder of a later registered trade mark, pursuant to section 11(1) Trade Marks Act 1994.

For the full text of the decision, click here.

Seven for all mankind LLC v OHIM, Case C 655/11 P, 21 February 2013

The ECJ has upheld the opposition to an application for registration of the word sign“Seven for all mankind” as a Community trademark. The US clothing brand originally applied for registration of the mark in 2005 but it was opposed by Italian clothing company Seven, which held three figurative marks of the word “seven”. The ECJ upheld the decision of the EU General Court, which had found the figurative element of Seven’s trade marks to have been only ornamental in function and placed greater weight on the mark’s association with the word “seven”. The General Court also put great weight on the word “seven” above “for all mankind” and therefore found there to be sufficient similarity with the earlier trade marks so as to cause confusion under Article 8(1)(b) of Regulation No 207/2009.

For the full text of the decision, click here.

Interflora Inc and another v Marks and Spencer plc [2013] EWHC 273 (Ch), 21 February 2013

In the ongoing disputes about the admission of survey evidence, and following the decision of the Court of Appeal on this issue, Justice Arnold has ruled that Interflora are permitted to adduce in evidence witness statements from 13 witnesses sourced by means of a consumer survey.

In doing so, the High Court has provided some further guidance on the application of the Court of Appeal’s decision regarding witness evidence derived from surveys and used to evidence confusion.

For the full text of the decision, click here.

A & E Television Networks LLC and another v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch), 1 February 2013

The High Court has ruled that the “Discovery HISTORY” television channel name, a related logo and abbreviation “DISC. HISTORY” did not infringe the “HISTORY CHANNEL UK” trade mark or the CTMs for the same words and figurative representation incorporating the word “History”. It was also held that it did not amount to passing off of various names; “History”, “The History Channel” or “Military History”. The Defendant’s counterclaim for the declaration of invalidity of the trademarks was rejected. It was held that there was no passing off action as although using a common word, “HISTORY”, may cause confusion, the user cannot be allowed to monopolise the word. Further the use of the word “Discovery” was said to be enough to dispel confusion and automatically made viewers associate “DISCOVERY HISTORY” with the Discovery group of channels, not AETN’s.

For the full text of the decision, click here.

DATABASES

Football Dataco Ltd and others v Stan James plc and others; and Football Dataco and others v Sportradar GmbH and another, Court of Appeal, 6 February 2013

The Court of Appeal held that both the online betting company, Stan James, and the football data provider, Sportradar, were jointly liable for database right infringement carried out by customers in the UK when customers downloaded football results data via the Stan James website. The Court of Appeal also emphasised the need to analyse the level of investment when determining if database right subsists. It is reported that the case is likely to be appealed to the Supreme Court.

For the full text of the decision, click here.