IP Snapshot: October 2007

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

TRADE MARKS

L’Oréal SA & Ors v Bellure NV & Ors (Court of Appeal)

The Court of Appeal considered the use of a competitor’s trade marks on comparative price lists and the use of similar marks in packaging in relation to whether such use would interfere with the essential function where the marks were used to designate the characteristics (in this case the smell) of the competitor’s goods. In commenting on the issues, Jacob LJ gave a clear indication that he considers European trade mark law should resist becoming overprotective as “neither the image nor the essential function of the trade marks for the originals is adversely affected by the lists”. The Court of Appeal also took the opportunity to roundly reject any notion of extending the law of passing off to include broader concepts of unfair competition.

For full commentary and analysis on L’Oréal SA & Ors v Bellure NV & Ors, click here.

Riemann & Co -v- Linco Care (High Court)

The High Court granted an interim injunction to the proprietor of a trade mark for “P20”, registered for sunscreen products, to prevent sales of a competing product called “C20”. The owner of C20 admitted that there was an arguable case, albeit weak, so the Court assessed only the balance of convenience. The Court held that the grant of an injunction would achieve a "fairer" result for the party that succeeded at trial than refusal to grant.

Celine SARL v. Celine SA, Case C-17/06, ECJ, 11 September 2007

The European Court of Justice held that unauthorised use of a trade mark as a company, trade or shop name does not amount to infringement as the purpose of a company, trade or shop name is not, of itself, to distinguish goods/services, but to designate a business which is being carried on. However, subsequent use of the mark in relation to goods/services would be an infringement if it affected the essential function of the mark.

For our full Law-Now on this important decision, click here.

Benetton Group SpA v G-Star International BV, ECJ, 20 September 2007

In a preliminary reference from the Netherlands, the ECJ has determined that a mark that consists of a shape of a product that gives substantial value to that product, cannot be registered as having acquired distinctiveness under Article 3(3) of the Directive. Following the ECJ’s determination in Philips v Remington, a mark that is not registrable under Article 3(1)(e) cannot subsequently be registrable, even if it has in fact, subsequently been used to demonstrate origin. The decision requires trade mark owners to tread a fine line between using a shape mark to demonstrate origin, but not using it so much that the shape gives substantial value to the product and it becomes unregistrable.

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

Societe des Produits Nestle SA -v- OHIM, ECJ, Case C193/06, 20 September 2007

The ECJ found that the CFI had not applied the correct test when assessing whether the mark QUICKY plus a rabbit design should be registered, given the existence of an earlier pure word mark for QUICKIES. It found that the CFI had not assessed the visual similarity between the marks, and referred the case back to the CFI.

La Mer Technology v OHIM, CFI, 27/9/07

In a decision related to the previous litigation regarding genuine use of a trade mark, the CFI has upheld the decision of the OHIM Board of Appeal that even minimal use of a trade mark can amount to genuine use for the purpose of avoiding revocation of the mark on grounds of non-use.

For the full text of the decision, click here.

Trade Marks: Relative Grounds - important changes at the UKIPO

As of 1 October 2007, the UK Intellectual Property Office (UKIPO) no longer examined a trade mark application on relative grounds and the onus will be on proprietors of potentially conflicting marks to object to the mark. Owners of CTMs and certain Madrid Protocol registrations may ‘opt in’ to the notification system of the UKIPO to receive details of applications for potentially conflicting marks automatically.

For full details of this important change in practice, see our Law-Now here.

COPYRIGHT

Laurence Wrenn and Integrated Multi-Media Solutions Limited v Stephen Landamore, (High Court)

The High Court has upheld an agreement between a software developer and a commissioning party under which copyright in computer programs was agreed to vest in a company jointly owned by the parties. The judge found that it was not necessary to imply an assignment of copyright to make the arrangement commercially workable, but that an exclusive licence could be implied, including access to the source code.

DESIGNS

Procter & Gamble v Reckitt Benckiser (Court of Appeal)

The Court of Appeal overturned Mr Justice Lewison’s High Court decision of December 2006 that a spray bottle used by Reckitt Benckiser for marketing its “Air Wick Odour Stop” product infringed Procter & Gamble’s registration for a spray bottle, used by P&G to market “Febreze”. In doing so, the Court had changed the tests for infringement and validity and provided guidance on the comparison to be made between designs and the allegedly infringing article. The effect of the decision is to significantly narrow the scope of protection for registered designs.

For our full Law-Now on this important decision, click here.

PATENTS

Merck Genéricos – Produtos Farmacêuticos Ldª v Merck & Co. Inc. and Merck Sharp & Dohme Ldª, (ECJ)

The European Court of Justice has ruled that national courts are free to decide whether or not to apply TRIPs (Trade-Related Aspects of Intellectual Property Rights Agreement) as long as doing so would not give rise to a conflict with Community law. The Article of TRIPs in question concerns the life of a patent and by applying TRIPs, a national court can potentially extend that life.

The European Court of Justice has ruled that national courts are free to decide whether or not to apply TRIPs (Trade-Related Aspects of Intellectual Property Rights Agreement) directly as long as doing so would not give rise to a conflict with Community law. The Article of TRIPs in question concerns the life of a patent and by applying TRIPs, the national Portuguese court could potentially extend that life to the full 20 year term.

For our full Law-Now on this case, click here.

Commission sends statement of objections to Rambus in relation to alleged "patent ambush"

The European Commission has alleged that Rambus’ patent ambush, in relation to a type of electronic memory, is an abuse of European competition law. Importantly this is the first time that a patent ambush has been characterised as an abuse of dominance. Rambus has some time to respond to the allegation before the Commission considers whether or not to take any form of action against it.

For our full Law-Now on this development, click here.