IP Snapshot - February 2010

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

TRADE MARKS

G-Star Raw Denim kft v OHIM, General Court, 21 January 2010

The EU General Court upheld an OHIM Board of Appeal decision that Article 8(5) of the Community Trade Mark Regulation (40/94/EEC, now replaced by 2009/207/EC) did not apply because the visual and conceptual differences between the "G Stor" figurative mark applied for, and the earlier marks relied on, the "G-Star" figurative mark and the word marks G-STAR and G-STAR RAW DENIM, prevented any assumption of a possible link between them.

For the full text of the decision, click here.

Audi AG v OHIM, ECJ, 21 January 2010

The ECJ has annulled the decisions of the EU General Court and OHIM’s Board of Appeal which had refused the registration of the word mark VORSPRUNG DURCH TECHNIK in relation to a wide selection of goods and services. The General Court had considered that the mark had only acquired distinctive character in respect of motor vehicles and their components. However, the ECJ held that the General Court had been incorrect to apply a stricter set of criteria to advertising slogans than those applicable to other marks. The conclusion that mark was not “immediately distinctive” simply because the public would perceive the slogan to be a promotional formula and that its laudatory nature meant that it was a slogan that could be used by other companies.

The ECJ also gave guidance as to the registrability of slogans, noting that a slogan which possessed characteristics such as having a number of meanings, being a play on words or able to be perceived as imaginative, surprising and unexpected, would likely endow that slogan with distinctive character.
For the full text of our Law-Now update on this decision, click here.

PASSING OFF

Diageo v Intercontinental Brands, High Court, 19 January 2010

Diageo v Intercontinental Brands is the latest in a long line of ‘extended form’ passing-off cases. The Spanish Champagne case in 1960 was the first to prevent rival traders from applying a particular term, “Spanish champagne” to describe products that were not champagne by way of a passing off action. This swiftly followed by decisions granting the same protection to the terms ‘sherry’, ‘advocaat’, ‘Scotch whisky’ and ‘Swiss chocolate’. In the Swiss Chocolate case it was explained that the extended form of passing off protects the accuracy and exclusivity of descriptive terms.

In following these decisions, Mr Justice Arnold has found that the term ‘vodka’ defines a distinctive class of goods which has a protectable goodwill and that applying the term VODKAT to a product that was marketed as vodka, but was not in fact vodka, constituted actionable passing off.

For the full text of the decision, click here.

COPYRIGHT

Burrows v Smith & another, High Court, 20 January 2010

A computer games designer failed in his claim for copyright infringement and breach of confidentiality against his ex employer concerning the design for a computer game. There was no evidence of copying and information had not been disclosed in circumstances importing an obligation of confidence, but instead at a time when the claimant was employed by the defendant as a games designer.

For the full text of the decision, click here.

R v Alan Wells, Crown Court, 15 January 2010

Alan Wells, the founder of the music-sharing website OiNK has been acquitted of a charge of conspiracy to defraud. OiNK enabled its members to share music, charging $5 for membership which was available by invitation only. OiNK is said to have facilitated the exchange of 21 million files between 2004 and 2007.

Although Mr Ellis was arrested for copyright infringement, ultimately he faced a single charge of conspiracy under the common law, namely that he “conspired together with others unknown to defraud such persons as have an interest in musical works, sound recordings and in the performance of music by distributing infringing copies of musical works and sound recordings”. There were no proceedings brought against Mr Ellis under the CDPA or under the Criminal Law Act 1977 for statutory conspiracy.

The case highlights the short comings of copyright law to prevent the administration of such websites.

PATENTS

Georgetown University and others, IPO, 29 December 2009

A hearing officer of the IPO has held that vaccines should not be treated differently from other medicinal products in the application of the SPC Regulation (1768/92/EEC). The SPC applications were for vaccines for treating a different single strain of the Human Papillomavirus, while the marketing authorisations were granted for combinations of these vaccines. Under UK case law this meant that the conditions for the grant of these SPC applications were not met. There was no basis in the Regulation to treat vaccines differently from medicinal products for the treatment rather than prevention of disease.

For the full text of the decision, click here.

Medeva BV v Comptroller General of Patents, High Court, 27 January 2010

The High Court has upheld the decision of the IPO that a SPC could not be granted for a combined vaccination product containing more active ingredients than were protected by the basic patent. Kitchin J also held that an appeal filed before the IPO had reached a final decision was premature.

For the full text of the decision, click here.

Stockley v Husqvarna UK Ltd, IPO, 30 December 2009

The proceedings in the Intellectual Property Office concerned an application by Mr Stockley under s 72 of the Patents Act 1977 for revocation of a patent for an electric lawnmower with a spool holder for storing the electric cable integrally formed on an outside surface of the grass-box.

Mr Stockley’s disclosure of a prototype lawnmower to his friend Dr Cox was, despite taking place in his garage, sufficient to be a disclosure making the invention available to the public as Dr Cox had specifically asked about whether Mr Stockley should be disclosing it to him and Mr Stockley had assured Dr Cox that as a patent application had been filed ‘there was nothing to worry about’.

For the full text of the decision, click here.

Mölnlycke Health Care AB and another v BSN Medical Limited and another, High Court, 17 December 2009

The High Court recently considered the application of Article 27 of the Regulation on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (44/2001/EC) (the “Brussels Regulation”). The main issue was whether a claim in England for infringement of a European patent should be stayed while an application for declaration of non-infringement proceeded in Sweden. The case turned on whether the claim in England was between the “same parties” as the parties to the proceedings in Sweden.

The judge reluctantly dismissed the application as, if the parties were considered to be “the same”, one of them might be denied its right under an exclusive licence. An interim injunction was also refused because there was no real risk of irreparable harm to the patentee if the injunction were refused, whereas there was evidence that the accused infringer could suffer reputational harm if the injunction were granted. The inequitable conduct of the patentee was also a significant factor in this decision.

For the full text of the decision, click here.