IP Snapshot July 2008

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

TRADE MARKS

Mühlens GmbH & Co. KG v OHIM (CFI)

The CFI upheld the Board of Appeal’s opposition to the mark MINERAL SPA on the basis of the earlier registration of the mark SPA. In the CFI’s view, it was likely that the use of the mark MINERAL SPA would take unfair advantage of the repute of the SPA mark. The court was satisfied that the earlier mark had a reputation, due to the general availability of SPA mineral water, its high market share and extensive advertising in the relevant region.

For the full text of the decision, click here.

O2 Holdings Ltd and O2 (UK) Limited v Hutchison 3G Limited (ECJ)

The ECJ ruled that a trade mark owner can bring a trade mark infringement action to prevent the use of its trade mark in comparative advertising, provided that it can show that there is a likelihood of confusion as to the origin of goods/services.

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

PATENTS

Conor Medsystems Inc. v (1) Angiotech Pharmaceuticals Inc. (2) University of British Columbia (House of Lords)

The House of Lords clarified how to identify the inventive step of a patent. In particular, the House of Lords made clear that, although a patent may not be merely speculative, it was not necessary that the patent taught that the patent worked.

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

IGT, BL O/149/08 (IPO)

The IPO hearing officer found that an application (after amendment) derived from a US application that was directed to a gaming machine in which 2D data is converted for a 3D display, met the Aerotel test for patentability.

Aerotel Ltd v Wavecrest Group Enterprises Ltd & Others (High Court)

The High Court found that the Aerotel patent for a telephone system was invalid on the grounds of obviousness and excluded subject matter. Both the concept of pre-paid calls and the use of the Special Exchange were obvious in light of the prior art. Additionally, the decision to allow pre-payment was a method of doing business, and the means of implementing this decision was via computer software.

Novartis AG v Dexcel-Pharma Limited (High Court)

The High Court granted an interim injunction in a patent infringement action, even though the patentee’s argument requires the Court to place a different construction on the relevant patent claim from that set out by the Patents Court and approved by the Court of Appeal in an earlier case.

For the full text of this decision, click here.

COPYRIGHT

Premier League & others v QC Leisure & others (High Court)

In a copyright infringement action brought by the FA Premier League against both importers of decoder cards and pub landlords accused of using the cards to access live Premier League matches broadcast from other EU Member States, the High Court referred questions to the European Court of Justice (ECJ).

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

Meridian International Services Ltd v Richardson and others (Court of Appeal)

A recent Court of Appeal decision illustrated the value of determining the ownership of IP rights in software at the outset of a commercial relationship. The Court of Appeal held that the contract between the parties did not deal with copyright ownership and the Court refused to imply a term into the contract which transferred ownership of the copyright.

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

CONFIDENTIAL INFORMATION

Hays Specialist Recruitment (Holdings) Limited and Another v Ions and Another (High Court)

The High Court ordered a previous employee of Hays Recruitment to provide pre-action disclosure of various documents relating to business contacts he had accumulated on a social networking site, LinkedIn, during his employment with the company. The High Court determined that although there was little evidence which would enable it to weigh up the relative merits of the substantive arguments on both sides, it was satisfied that Hays had an arguable case against Mr Ions and that the test for pre-action disclosure was clearly met.

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

Smith v ADVFN PLC [2008] EWCA Civ 518 (Court of Appeal)

The Court of Appeal refused to grant a widely drafted Norwich Pharmacal Order (NPO) on the basis that the information requested would have required the court to consider each of the postings individually and decide whether or not each of the postings were defamatory.

For the full text of the decision, click here.