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

TRADE MARKS

Interflora Inc v Marks and Spencer plc, High Court, 15 April 2013

At the beginning of the trial concerning trade mark infringement by the use of key words, the Court gave a short judgment allowing the admission of academic journal evidence by Interflora.

For the full text of the decision, click here.

Interflora Inc and Interflora British Unit v Marks and Spencer plc, High Court, 21 May 2013

Following return of the case from the CJEU, the High Court had found in favour of Interflora in its long running battle with Marks and Spencer (“M&S”) concerning keyword advertising. M&S was found to have infringed Interflora’s registered trade marks by using INTERFLORA as a keyword to display its own advertising for flower delivery services. On the facts, the Court found that the well informed and reasonably observant internet user was not aware that M&S’s flower delivery service was not part of Interflora’s network and there was nothing in M&S’s advertising to inform the user that it was in fact a competitor. Further, the nature of the Interflora network under which members traded under their own names and the fact that Interflora had commercial relationships with several other large retailers made a misapprehension more likely. It remains to be seen whether this case turned on its specific facts or whether it is to be of wider application to keyword advertising.

See Law-Now.

Rocket Dog Brands LLC v OHIM (Case T-231/12)

The General Court of the EU has upheld the Board of Appeal’s decision to dismiss an opposition to the word mark “JULIUS K9” based on two earlier figurative marks featuring the word “K9”.

For the full text of the decision, click here.

In the matter of application 2574917 by Chanel Limited and opposition 102457 by the Minster for Economic Development, States of Jersey, BL O-172-13, 29 April 2013

The UK Intellectual Property Office has upheld an opposition to the application for the word JERSEY in class 3 by Chanel. This opposition, based on section 3(1)(c) of the Trade Marks Act 1994 succeeded because the term JERSEY was a geographical name which is liable to be used by undertakings as an indication of the geographical origin of the category of goods which must, in the public interest, remain available to those undertakings to indicate the geographical origin of their goods.

For the full text of the decision, click here.

Boehringer Ingelheim International GmbH v OHIM, Case T-640/11

The General Court of the EU has upheld a decision of the Board of Appeal to refuse the registration of the word mark “RELY-ABLE” on the basis that the mark is devoid of distinctive character. The General Court concluded that the mark could not be perceived and memorised by the relevant consumer as a trade mark, rather it would be perceived as nothing more than a promotional message whose aim is to highlight an important positive aspect of the services, namely that they are reliable.

For the full text of the decision, click here.

Doosan Power Systems Ltd v Babcock International Group Plc [2013] EWHC 1364 (Ch), 22 May 2013

The High Court awarded an injunction finding that the defendant was in breach of a trade mark licence agreement in relation to certain BABCOCK trade marks in addition to being liable for passing off. In relation to the breach of the licence, the scope of the rights granted was not set out clearly in the agreement. The judge considered that the defendant had reserved the right to use the marks in relation to military nuclear services only and, by using the BABOCK mark in relation to civil nuclear services, it had infringed on the claimant’s rights under the licence. In relation to the passing off claim, the judge considered that, even though there was no suggestion that the defendant sought to pass it services off as those of the claimants, certain claims on the defendant’s website misappropriated the claimant’s goodwill and could influence potential customers to open discussions with the defendant even if any confusion was cleared up before contracts were agreed, akin to "initial interest confusion".

For the full text of the decision, click here.

Voss of Norway ASA V OHIM Case T-178/11, 28 May 2013

The EU General Court upheld OHIM’s Appeal Board’s decision that a three dimensional mark for a drinks bottle was invalidly registered as it is devoid of distinctive character under Article 7(1)(b) of Regulation 207/2009/EC. The court decided that the three dimensional bottle shape did not depart significantly from the norms and customs of the beverage sector in terms of the packaging of a liquid product, it was a mere variant. Further, the combination of the shape of the bottle and the cap were also not capable of giving the mark a distinctive character.

For the full text of the decision, click here.

Allen v Redshaw [2013] EWPCC B1, 15 May 2013

The Patents County Court held that the defendant’s merchandising items infringed the claimant's artistic copyright in various characters which has been part of a puppet show and featured in the TV series Button Moon. The Court held that the characters portrayed on the defendant's mugs and t-shirts reproduced a substantial part or parts of the claimant's designs. The Court also rejected the defendant’s argument of the defence of parody. The Court also found that the defendant was liable for passing off, finding that the disclaimer used was inadequate to prevent a misrepresentation.

For the full text of the decision, click here.  

PATENTS

HTC Europe v Apple, Court of Appeal, 3 May 2013

The Court of Appeal has partially reversed a decision of Floyd J in the Patents Court in which Floyd J found that Apple’s patents in relation to a “two-touch” touch-screen interface for a smartphone were invalid. The CA upheld Floyd J’s decision on obviousness on some of the claims.

For the full text of the decision, click here.

Novartis AG v Hospira UK Limited [2013] EWHC Civ 583, 22 May 2013

The Court of Appeal has reversed the decision of Birss J and granted an injunction to prevent Hospira, a generic medical company, from launching a product before the appeal in the related patent revocation proceedings is heard. In his first appellate judgment after going up to the Court of Appeal from the High Court, Floyd LJ made it clear that the burden of clearing the way before launch is on the generic competitor rather than the patentee and that the timescale should allow for appeals, which are the norm rather than the exception in such cases.

For the full text of the decision, click here.

NOKIA OYJ v IPCom GmbH & Co KG and IPCom GmbH & Co KG v HTC Europe Co Limited and others [2013] EWHC 1178 (Pat), 2 May 2013

This case deals with the extension of the notion of “invalidity” of a patent in relation to the construction of undertakings given by parties before the English Court of Appeal (and memorialised in an order) to grant and take a FRAND licence respectively, when the terms and scope of the patent - and therefore its essentiality - had been rendered uncertain by a decision of the European Patent Office Technical Board of Appeal (“TBA”). The High Court ruled that the FRAND trial should be stayed because the underlying purpose of the order was to produce an inquiry if the result might be relevant. The TBA decision “implicitly” invalidated the patent by rejecting it in its original form. The final form of the patent is still being awaited. This made a FRAND trial ordered by the Court of Appeal irrelevant because it is no longer clear whether there was an infringement of the patent.

For the full text of the decision, click here.  

COPYRIGHT

Coward v Phaestos Ltd and others [2013] EWHC 1292 (Ch), 17 May 2013

A software developer has been found to infringe copyright in software he created, after the High Court ruled that title to the software vested in the partnership for which the software was created. The court upheld the defendant’s counterclaims for infringement and breach of confidence. Justice Asplin found that as the software had been created for the partnership and was the bedrock of the partnership’s business in which the partnership had invested substantially it was clear that it was intended to be a partnership asset. The developer had enabled the software to become entangled with further developments made by employees of the partnership which was evidence that the software was intended to be an inextricable part of the partnership.

For the full text of the decision, click here.

Sheldon v Daybrook House Promotions Ltd [2013] EWPCC 26, 8 May 2013

In assessing damages for unauthorised use of the claimant’s photograph, the PCC rejected the defendant’s submissions that an appropriate licence fee should be in the region of £300 and concluded that the licence fee payable, had the use been authorised, would have been in excess of £5,000. This figure took account of the nature of the claimant’s business, the level of fame of the subjects in the photograph and the exclusive access the photographer had to the subjects.

For the full text of the decision, click here.

CONFIDENTIALITY

Vestergaard Frandsen A/S v Bestnet Europe Limited [2013] UKSC 31

The Supreme Court dismissed Vestergaard’s appeal and held that there can be no liability for misuse of confidential information unless that information has been acquired, together with reasonable knowledge of its confidentiality. The Supreme Court also provides useful guidance on the extent to which terms of confidentiality will be implied into a contract, as well as the limits of invoking liability on the grounds of common design. The court’s decision also shows a clear appreciation of the significance of IPR (including trade secrets) to the promotion of commercial enterprise and the need to balance this with the right of former employees to compete honestly with former employers.

For the full text of the decision, click here.