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

PATENTS  T 1370/11 On-demand property system/MICROSOFT, 11 March 2016

A European Patent Office appeals board has dismissed an appeal against a patent application for a computer programme that was rejected for lack of inventive step. The board disagreed with the argument that a computer programme or computer-implemented method was inventive because it reduced the time of a previously used method.

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

American Science & Engineering Inc v Rapiscan Systems Limited, [2016] EWHC 756 (Pat),11 April 2016

In finding that a patent for a mobile x-ray scanner was valid and not obvious over the prior art, the High court considered the way in which each party had instructed their experts. While the Claimant had asked their expert to consider the prior art and assess what would have been obvious developments before showing him the patent, the Defendants had first shown their expert the patent and then asked him to consider the question of obviousness. Both approaches had difficulties. The fact that a particular step did not occur to the Claimant’s expert when reviewing the prior art did not automatically mean that this step was not obvious. Conversely, the Defendant’s approach risked taking into account hindsight. The Court confirmed that the correct question for the experts to consider was whether, “viewed without any knowledge of the claimed invention, the differences constituted steps which would be obvious”.

For the full text of the decision, please click here


Grenade (UK) Limited v Grenade Energy Limited & ANR [2016] EWHC 877 (IPEC)

Summary judgment was granted in a passing off claim. The defendant had already admitted misrepresentation and accepted that the claimant had goodwill and therefore the Court found that establishing damage was inevitable. In addition, the sole director of the defendant company was also held liable for passing off as a joint tortfeasor.

Please let us know if you would like a copy of the full text of this judgment.

Apple and Pear Australia and Star Fruits Diffusion v EUIPO (Case C-226/15 P), 13 April 2016

The Advocate General has provided his opinion in a case concerning seemingly conflicting decisions by the EU trade mark Court in Brussels and the Board of Appeal at the EUIPO regarding likelihood of confusion.

In doing so, the Advocate general has suggested that the principle of res judicata should only apply in trade mark cases where the subject matter, cause of action and parties are identical. That said, there is an obligation the EUIPO and the Court to take account of each other’s decisions and, while possible, it should be undesirable for such authorities to reach decisions that cannot be substantively reconciled with one another.

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

Jack Wills Ltd v House of Fraser (Stores) Ltd [2016] EWHC 626 (Ch), 21 March 2016

Following a decision by the High Court in January 2014 which found that House of Fraser had infringed the Jack Wills’ pheasant trade mark, the Court has decided that House of Fraser must pay Jack Wills 41% of its net profits from sales of the infringing articles. The court held that House of Fraser was entitled to deduct overheads from the sales of infringing products. Further, Jack Wills was only entitled to a proportion of profits from the sale of the infringing product that derived from the logo. This case provides helpful guidance on the approach the courts take to the calculation of an account of profits in IP infringement cases.

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