IP Snapshot: March 2008

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

TRADE MARKS

Honda Motor Co v Neesam & others (High Court)

In a case concerning parallel importation of branded Honda motorbikes from Australia to the UK, the Court found largely for the importer on the facts: Honda as the brand owner had impliedly consented to the sale of these items within the EEA, until its consent was withdrawn at a later date. The judgment is very long and considers in depth highly complex factual evidence: the key point is how the issue of consent was treated.

Eli Lilly -v- 8pm Chemists Limited (Court of Appeal)

The Court of Appeal found that importation of trade marked goods into the UK from outside Europe (here Turkey) under customs procedures, for the purpose only of onward transit to other destinations outside Europe, could not infringe the trade marks.

For the full text of the decision, click here.

Usinor SA v OHIM (Court of First Instance)

The CFI has upheld an appeal against a decision of the OHIM board of appeal and held that the sign GALVALLOY should not be registered because it is confusingly similar to the earlier mark GALVALLIA, registered in respect of identical goods, despite finding that GALVALLIA was of low distinctiveness.

Victor Wilson v (1) Yahoo! UK Ltd (2) Overture Services Ltd (High Court)

On 20 February 2008, the High Court handed down its decision in an important trade mark infringement case brought by Mr Wilson against Yahoo! UK Ltd and its sister company, Overture Services Ltd (“Yahoo!”). The case, which concerned an application for summary judgment and/or strike out, considered whether the use of keywords in sponsored advertising amounted to trade mark infringement by Yahoo!.

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

PATENTS

Research in Motion UK Limited v Visto Corporation (High Court)
The High Court has ruled that Visto Corporation’s patent for transferring and retrieving emails across firewalls was invalid for lack of inventive step and further that it was excluded for patentability under s1(2) Patents Act 1977 as it related to a computer program as such. The case provided confirmation of the ‘technical effect’ approach to establishing whether an invention falls foul of this exclusion.

For the full text of the decision, click here.

Research In Motion UK Ltd v Visto Corporation (Court of Appeal)

The Court of Appeal gave a robust decision on jurisdiction and forum for determining infringement of the national designations of a European patent. Visto’s counterclaim in the UK proceedings claimed that an action brought by RIM in Italy for revocation of the Italian equivalent of the same European patent was an abuse of the court’s process. The Court of Appeal found that such an “Italian torpedo” claim was not an abuse of process and there was nothing reprehensible or unacceptable in RIM’s behaviour. For as long as the system existed, parties should be entitled to take full advantage of it. The judgment is a thoughtful summary of the European jurisdiction rules for determination of patents disputes and highlights once again why only a true European patent would offer an opportunity to avoid forum shopping.

For the full text of the decision, click here.

Glaxo Group Limited v Genentech Inc and Biogen Idec Inc. (Court of Appeal)

The Court of Appeal has provided guidance on whether or not to stay patent proceedings in the UK pending determination of validity in the EPO. While a number of factors should be considered, the most important would be the length of time that it would take for the respective proceedings in the national court and the EPO to achieve some certainty on the issue of the validity of the patent. If proceedings could be resolved much quicker by national courts it would normally be appropriate to decline to stay proceedings in the Patents Court.

For full text of the decision, click here.

DESIGNS

Mars UK Limited v Paragon Products BV (OHIM Board of Appeal)

The OHIM Board of Appeal has upheld an appeal against a decision of the invalidity division that a design for a dog chew made a different overall impression on the informed user, and thus had individual character, because it had five prongs as against the earlier design’s four prongs.

J Choo (Jersey) Limited v Towerstone Limited & others (High Court)

The upmarket shoe brand Jimmy Choo Ltd persuaded the High Court to issue summary judgment against Towerstone Ltd, on the basis of infringement of both its registered and unregistered Community design rights relating to a handbag. The High Court accepted the validity of Jimmy Choo’s design rights and found that the Towerstone handbag infringed these rights. However the key finding was in relation to the Court’s finding that there was no defence to the award of damages for innocent infringement of a Community design.

For full text of the decision, click here.