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

TRADE MARKS

Leno Merken BV v Hagelkruis Beheer BV, Case C-149/11, 19 December 2012

The CJEU has given its long-awaited and much-anticipated decision in the ONEL/OMEL case, which turned on the issue of the extent of geographical use of a Community trade mark that is required for that trade mark to have been put to genuine use in the Community and therefore to be invulnerable to an attack for non-use.  However, the court has provided no meaningful guidance, instead simply restating its usual formula that the referring court must take into account all the facts and matters of the case.  Trade mark owners are likely to be disappointed that the CJEU has spurned the opportunity to clarify even this fairly straightforward principle of Community trade mark law.

For the full text of the decision, click here

Pelicantravel.com v OHIM, General Court, T-136/11, 13 December 2012

The General Court dismissed an appeal under which pelicantravel.com had attempted to invalidate, on the grounds of bad faith, a Community trade mark for PELIKAN, owned by a German publisher of the same name.  It was alleged that the Community trade mark was almost identical to previous marks owned by the publisher including a mark that was revoked for non use.  Further, it was argued that the publisher did not intend to use the mark in relation to the range of goods and services applied for.  These arguments were rejected.  There was no evidence to show lack of intention to use nor an intention to prevent third parties from entering the market.  The General Court held that the publisher had acted legitimately in seeking to register an updated version of its mark.

For the full text of the decision, click here

Hrbek v OHIM [2012] EUECJ Case C-42/12, 29 November 2012

The CJEU upheld the EU General Court's decision that OHIM had been correct in finding that there is a likelihood of confusion between the applicant’s “Alpine” mark and an earlier similar mark belonging to Outdoor Group Limited (now Blacks Outdoor Retail Limited).  The applicant appealed to the CJEU on the grounds that the General Court had failed to carry out a global assessment of the likelihood of confusion and had focused exclusively on the common “Alpine” element, without attaching any weight to the other figurative elements in the applicant’s mark.  The CJEU also confirmed that the General Court had been correct in finding that the low level of distinctiveness of the earlier mark (“Alpine” in respect of skiwear etc), did not preclude a likelihood of confusion.

For the full text of the decision, click here

Omega Engineering Inc v Omega SA [2012] EWHC 3440 (Ch), 30 November 2012

The High Court rejected Omega SA’s appeal of an IPO decision and allowed Omega Engineering Inc’s (“Omega US”) application for summary judgment in relation to Omega SA breach of a trade mark co-existence agreement between the parties.  Arnold J stated that Omega SA had breached the agreement by opposing, and subsequently appealing the IPO decision in relation to, Omega US’s figurative “Omega” trademark application and for 11 out of 18 Omega SA trademarks that Omega US considered contrary to that agreement.  Arnold J rejected Omega SA’s various arguments based on the literal meaning of the term “period timers” and stated that Omega SA could not rely on a decision relating to a separate 1994 co-existence agreement as that decision did not concern multipurpose goods.  Arnold J, however, did accept that Omega SA had a real prospect of successfully defending the remaining seven trademarks.

For the full text of the decision, click here

Societe des Produits Nestlé S.A v Cadbury Holdings Ltd CASE R 513/2011-2

Following opposition by Cadbury of Nestle’s three dimensional KitKat bar mark, the Board of Appeal of OHIM rejected the decision of the Cancellation Division of OHIM (the “Division”) to declare the mark invalid.  The Board found that the Division had misapplied the law and misinterpreted aspects of the Nestlé’s evidence.  It went on to establish that Nestlé’s mark had acquired distinctiveness through use in the EU.  It was held that Nestlé’s evidence showed that a substantial part of the population of the EU at the time of registration recognised the mark as originating from KitKat.  This was on the basis that the mark had acquired distinctiveness in five of the fifteen relevant Member States, the five of which accounted for 79% of the total population of the EU at the time.

For the full text of the decision, click here

COPYRIGHT

Copyright exceptions: major expansion to reflect Hargreaves recommendations

In late December 2012 the Government published its intentions concerning copyright exceptions.  The Hargreaves Review had recommended a raft of changes both to modernise copyright law in light of current technology and to assist economic growth in the creative industries, which the Government has now decided to implement.  In October 2013 we can expect new legislation to come into force to permit parody of copyright works, private copying to allow for format shifting and data analytics for non commercial research, together with a simplification and expansion of existing exceptions such as educational purposes.  There will also be a general prohibition on contracting out of the exceptions.  Further, new legislation will amend the procedure used to complain that a permitted act is prevented by technological protection measures and also will introduce a system of copyright notices to be published by the Intellectual Property Office.

To see our Law-Now on this, click here

PATENTS

Microsoft Corporation et al v Motorola Mobility LLC [2012] EWHC 3677

The High Court recently found that Motorola’s European patent relating to the synchronisation of message information across multiple transceivers, such as pagers, is invalid on the basis of: lack of novelty of three claims; and obviousness of all claims, in light of three pieces of prior art, and common general knowledge.  The case also considered the alleged infringement of the patent by Microsoft’s software products, Live Messenger and Exchange Active Sync. The Court held that if the claims had been valid, Microsoft’s products would have infringed Motorola’s patent.

For the full text of the decision, click here

Novartis AG v Generics (UK) Ltd [2012] EWCA Civ 1623, 12 December 2012

The Court of Appeal has upheld a High Court decision on the invalidity of an enantiomer patent over the racemic compound.  Generics (UK) Ltd, trading as Mylan, had sought declarations of invalidity in respect of the basic patent and SPC protecting Novartis’s drug Rivastigmine, used for treatment of Alzheimer’s disease.  The Court of Appeal held that Novartis’s patent and SPC were invalid on the basis that the invention claimed was obvious in light of the disclosure of the racemic compound in prior art.  This case also provides another reminder that the statutory question when assessing obviousness is “was the invention obvious at the priority date?” and not “was it obvious to try?”.

For the full text of the decision, click here

DESIGNS

Clinisupplies Limited v (1) Karen Park (2) Richardson Healthcare Limited (3) Mayur Patel [2012] EWHC 3453 (Ch)

Clinisupplies Ltd’s claim to infringement of a design right in a catheter insertion and removal kit was struck out because no design right was found to subsist.  Clinisupplies Ltd phrased its description of various elements of its product which attracted design right at a conceptual level, describing the choice and arrangement of components of catheter insertion and removal kit.  Although a design right could subsist in the layering of components; each element of Clinisupplies Ltd’s claim to a design right was found to be excluded under section 213(3)(a) as method or principle of construction.

For the full text of the decision, click here

PRIVACY

XY v Facebook Ireland Ltd [2012] NIQB 96, 30 November 2012

The Northern Irish High Court has granted an injunction against Facebook, requiring it to remove a page on which a sex offender was featured and named under the banner “Keeping Our Kids Safe From Predators”.  The  injunction was granted in accordance with Article 8 of the Human Rights Act 1998, which protects individuals’ rights to respect for private and family life and, seemingly, from intrusion and harassment.

For the full text of the decision, click here