IP Snapshot - March 2009

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

TRADE MARKS

Schenker SIA v Valsts ieņēmumu dienests, Case C- 93/08, 12 February 2009

Following a reference from the Latvian Supreme Court, the ECJ has ruled that the initiation of the ‘simplified procedure’ set out in Article 11 of Council Regulation 1383/2003/EC (whereby the rights owner and the owner of the goods can agree that the goods be destroyed without IP proceedings), does not deprive the competent national authorities of the power to impose a penalty on the parties responsible for importing the relevant goods into the EU.

For the full text of this decision, click here.

R v Kousar (Rukhsana) [2009] EWCA Crim 139, 21 January 2009

The Court of Appeal has held that for the purposes of section 92(1)(c) of the Trade Marks Act 1994, a wife was not in possession of counterfeit goods that her husband had stored in the loft of the family home. The Court held that the giving of permission was not sufficient to establish primary possession under section 92(1)(c) of the Act, and that a finding of being able to exercise a measure of control was not the same as a finding that the appellant did exercise control.

For the full text of this decision, click here.

L'Oréal SA & others v Bellure NV and others, Case C-487/07, 10 February 2009

Advocate General Mengozzi has given a controversial opinion in L'Oréal SA and others v Bellure NV and others after a reference to the ECJ from the Court of Appeal. The AG dealt with issues of trade mark infringement under the Trade Marks Directive ('TM Directive'), and comparisons under the Misleading and Comparative Advertising Directive ('the CAD').

For the full text of our Law-Now update on this, click here.

Aceites de Sur Coosur SA v Koipe Corporacion SL and OHIM, Advocate General Opinion, Case C-498/07, 3 February 2009

The Advocate General has recommended that the CFI’s judgment of 2007 be set aside, as in making a comparison between two word and device marks it had failed to compare the brand names which were included in the parties’ respective device marks. This had amounted to an error of law. The standards of the reasonable average consumer had not been applied, but instead the standard of an excessively negligent consumer.

For the full text of this opinion, click here.

Budějovický Budvar National Corporation v Rudolf Ammersin GmbH, C-478/07, 5 February 2009

The AG General has opined on the requirements that a simple geographic indication must satisfy to be compatible with Article 28 of the EC Treaty in the long-running dispute over the use of BUD and BUDWEISER between the Czech brewer Budvar and the US beer-maker Anheuser-Busch.

For the full text of this opinion, click here.

PATENTS

ratiopharm (UK) Ltd v Alza Corporation (Janssen-Cilag Limited as Part 20 defendant); and (1) Alza Corporation (2) Janssen-Cilag Limited v Sandoz Limited [2009] EWHC 213 (Pat), 12 February 2009

The High Court found a patent for a transdermal patch for administration of fentanyl (an opioid analgesic) through the skin over a period of at least 3 days to be invalid on the grounds of novelty and obviousness. The patent was not invalid for insufficiency.

For the full text of this decision, click here.

Zipher Limited v Markem Systems Limited & Anor [2009] EWCA Civ 44

The Court of Appeal held that an undertaking offered by a party in earlier proceedings was not enforceable in later proceedings. In order to ensure that an undertaking given in the course of litigation is given, it should be clear that it has been accepted and recorded in writing.

For the full text of this decision, click here.

Kelly and Chiu v GE Healthcare Ltd, [2009] EWHC 181 (Pat), 11 February 2009

This case has pushed open the door for employee inventors to seek significant financial compensation where an invention, which they devised, has resulted in "outstanding" benefit to their employer. Such claims have been possible for many years but the success of Drs Kelly and Chiu in this case and particularly the size of the awards (£1 million and £500,000 respectively) will prompt many employee inventors to consider their rights. That being said, any fear of the floodgates opening is unfounded. There are a number of hurdles that any claimant must meet; not least that the invention must be “something special”.

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

Kapur, BL O/033/09, 6 February 2009

The IPO Hearing Officer on appeal rejected six patent applications relating to a method of managing documents on a computerised system.
It was held that the applicant was estopped by a previous decision in the High Court from arguing that the claims as unamended should be allowed. In addition, because all of the proposed amendments would also be excluded as computer programs, the applications were refused.

For the full text of the decision, click here.

DATABASE RIGHTS

Apis-Hristovich EOOD -v- Lakorda AD, Case C-545/07

The ECJ gave judgment on 5 March 2009 in a further case on database rights. Unusually, there was no Advocate General’s Opinion preceding the judgment. The case concerns the extraction of parts of an online legal information and resources database, much of which comprised official public domain material, but which also contained editorial content, translations, links between documents and other information not generally accessible to the public.

The ECJ confirms that a wide view of extraction must be taken, in particular stating that the concept of extraction is independent of the defendant’s objectives, of any modifications he makes to the material extracted and of any differences in the structural organisation of the parties’ respective databases.

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