IP Snapshot: May/June 2008

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

TRADE MARKS

Digipos Store Solutions group Limited v Digi International Inc (High Court)

The High Court upheld the opposition of the Hearing Officer to the registration of the appellant’s marks on the grounds of a likelihood of confusion between these and the earlier registered marks of the respondent, all containing the term DIGI. The Judge clearly disagreed with the approach of the Hearing Officer towards the descriptive nature of the DIGI prefix, and made it clear that he would have reached a different result were he entitled to consider the case afresh. However, he stated he was bound to accept the Hearing Officer’s decision in the absence of a “distinct and material error of principle” or the Hearing Officer being “clearly wrong”.

For the full text of the decision, click here.

Eurohypo AG v OHIM (ECJ)

The ECJ confirmed that the mark EUROHYPO lacked distinctive character under Article 7(1)(b) of the CTM regulation, as it would be perceived as providing information about the type of services it designated (financial). However, the CFI’s reasoning had been incorrect in assessing distinctiveness under Article 7(1)(b) solely by reference to descriptive character under Article 7(1)(c).

For the full text of the decision, click here.

Rousselon Freres et Cie v Horwood Homewares Limited (High Court)

This case concerned the use of the SABATIER trade mark in juxtaposition with JUDGE or STELLAR. The Court found that the mark SABATIER did retain an independent distinctive role in the marks JUDGE SABATIER and STELLAR SABATIER. Therefore and given that the goods were identical, it was not possible to maintain that there is no likelihood of confusion between the SABATIER mark and the JUDGE SABATIER and STELLAR SABATIER marks. In reaching this conclusion, it was not necessary for the earlier mark to have a dominant role in the composite mark; average distinctiveness was sufficient.

For the full text of the decision, click here.

Ferrero Deutschland GmbH (ECJ)

A Swiss bakery firm, Cornu, applied to register the word FERRO as a Community trade mark for salted biscuits in Class 30. This was opposed by Ferrero, the confectionery manufacturer, on the basis of a risk of confusion. The ECJ found that although there was a low degree of similarity between the products, ie. between chocolate-covered confectionery and salted biscuits, there was a reasonable degree of similarity between the signs, and the reputation of the FERRERO mark in Germany was so great that there was a likelihood of confusion between the marks among German consumers.

Citigroup, Inc. and Citibank, NA v OHIM (CFI)

The CFI upheld the appeal of OHIM against one of its Board of Appeal decisions, finding that there was a similarity between a figurative mark containing the word “CITI”, applied for in relation to services in class 36, and the earlier word mark CITIBANK, applied for, among other CITI based marks, in relation to ‘financial affairs’ and ‘real estate services’. The CFI found that the earlier CITIBANK mark had a reputation, and that there was a risk of unfair advantage being taken in relation to the mark.

For the full text of the decision, click here.

Adidas AG and another v Marca Mode CV and others (ECJ)

The ECJ provided a judgment relating to Adidas’ famous three-stripes logo, and came down firmly on the side of the sportswear manufacturer. The dispute saw Adidas sue fashion outlet H &M for trade mark infringement in response to the use of similar stripes by H&M on its clothing. The case had reached the Dutch Supreme Court who turned to the ECJ for guidance. The ECJ ruled on whether the general interest in the availability of given signs in the market should have any bearing on the protection provided by a trade mark. The ECJ ruled that the requirement of availability should not play a part in assessing confusion.

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

COPYRIGHT

Peek & Cloppenburg KG v Cassina SpA (ECJ)

The ECJ has given a narrow construction to Article 4(1) of the Copyright Directive (2001/29/EC), closely following the opinion of the Advocate General. In particular, the term “distribution” as used in the Directive requires a transfer of property and is not satisfied by making goods temporarily available for use by the public, or by exhibiting the goods to them.

For the full text of the decision, click here.

Fisher v Brooker and another (Court of Appeal)

The Court of Appeal has overturned the High Court’s ruling of December 2006 which granted the former organist of the band Procol Harum a 40% share in the musical copyright in the band’s 1967 hit single “A Whiter Shade of Pale” 38 years after the record was first released.

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

COPYRIGHT/CONFIDENTIALITY

Mosley v News Group Newspapers Limited (High Court)

The High Court refused to grant an injunction to prevent video footage of Max Mosley, the head of Formula 1 motor-racing, being shown on the News of the World website. Despite dismissing the newspaper’s public-interest arguments under Article 10 ECHR, the court considered material was so readily available on a range of other websites and therefore that granting an injunction would make very little practical difference and would be a futile gesture. The decision is perhaps not surprising but is a useful reminder that it is difficult to obtain an injunction to prevent publication of material which is widely available in the public domain.

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

David Murray (by his litigation friends Neil Murray and Joanne Murray) v Big Pictures Limited (Court of Appeal)

The Court of Appeal has reinstated the case brought on behalf of JK Rowling’s infant son, David Murray, following the covert taking and subsequent publication of a photograph of David and his family in the street. In assessing the Article 8 right of a reasonable expectation of privacy, the court held that a child of famous parents, who had not sought publicity for their children, could expect the same degree of protection as a child of ordinary parents. The decision is likely to make photographers/publishers more cautious when taking pictures of children regardless of the nature of the activity being photographed.

For the full text of the decision, click here.

PATENTS

Actavis UK Limited v Merck & Co Inc (Court of Appeal)

The Court of Appeal has recently handed down a significant judgment in the case of Actavis v Merck, ruling that a Swiss form claim for the use of a pharmaceutical in the manufacture of a medicament could be allowed even where the novelty lay only in a new dosing regime. Emphasising the importance of taking an approach consistent with that of the EPO, the Court rejected arguments that it was bound not to allow such a claim on the basis of the Court of Appeal judgment in Bristol-Myers Squibb v Baker Norton. The case is likely to be of great interest to the pharmaceutical industry, as it provides a more consistent approach to patentability of Swiss claims across the European Patent Convention countries, and will improve the prospects of pharmaceutical companies seeking to obtain patent protection in the UK for new applications of known substances.

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

T 1319/04 - 3.3.02 Dosage regimen/KOS LIFE SCIENCES, INC. (EPO Board of Appeal)

The European Patent Office Board of Appeal has referred two questions concerning the interpretation of the “second medical use” provisions of the EPC 2000 as introduced in December last year. Specifically, whether it was possible to patent a medicament which is already known for treatment of the same illness where the only novel aspect is the new method of treatment / dosing.

For the full text of the decision, click here.

Rolawn Limited and Rolawn (Turf Growers) Ltd v Turfmech Ltd (High Court)

The High Court held that the claimants’ unregistered and registered design rights were not infringed by the defendant in an action involving wide-area mowers. The High Court held that although unregistered design rights subsisted in various physical aspects of the claimants’ mower, and in their configuration, there were no design rights in anything more general, and in particular not in relation to the methods or principles of construction. There had, the Court found, been no copying of any material aspects of the mower and no infringement. Likewise there was no breach of any registered design right, as the design of the mower created a different overall impression. The Defendant failed in its challenge to validity, with the High Court finding the overall design of the claimants had distinctive character.

For the full text of the decision, click here.