Bringing you regular news of key developments in intellectual property law.
TRADE MARKS
Rocket Dog Brands LLC v OHIM (Case T-338/12)
The General Court of the EU has upheld the Board of Appeal’s decision to dismiss an application to invalidate a logo mark containing the words “K9 PRODUCTS” based on an earlier figurative mark featuring the word “K9”.
For the full text of the decision, click here.
Malaysia Dairy Industries Pte Ltd v Ankenaevnet for Patenter og Varemaerker (Case C-320/12)
The CJEU has provided a ruling on the meaning of “bad faith” in the context of Article 4(4)(g) of Directive 2008/95. This ruling concludes that the fact that a person knows or should know that a third party is using a mark abroad at the time of filing his application is not sufficient, in itself, to permit the conclusion that the person making the application is acting in bad faith.
For the full text of the decision, click here.
Interflora Inc -v- Marks and Spencer plc, High Court, 12 June 2013
Following the recent High Court judgment of substance in this matter dated 21 May 2013, the case returned to Court for a hearing on relief. The Judge also clarified some other issues arising from his judgment, in particular the issue of “negative matching”. He confirmed that a failure to “negative match” a third party trade mark when bidding for keywords could be infringing and was “use” of a trade mark. He granted a wide and generally worded injunction against M&S with EU-wide ambit (based on Interflora’s Community Trade Mark), which he believed to be proportionate in the circumstances.
For the full text of the decision, click here.
Lumos Skincare Ltd v Sweet Squared Ltd and others [2013] EWCA Civ 590, 6 June 2013 and Lumos Skincare Ltd v Sweet Squared Ltd and others [2013] EWCA Civ 671, 14 June 2013
The Court of Appeal has upheld an appeal that the defendant’s nailcare products, which used the mark “Lumos”, damaged the goodwill of the claimant’s “Lumos” skincare products using the same mark. The appellate Court decided that the judge at first instance had misdirected himself as to the relevant market, and the potential customers upon whom the likely effect of the defendant’s misrepresentation should be judged. Customers of skincare and nailcare products, having knowledge of the markets, would likely be confused and misled as to the origin of the defendant’s products and confuse them with those of the claimant.
The Court of Appeal then later agreed to suspend the effect of an injunction against the defendant for a short period of time in order to allow Sweet Squared to adapt its business and also pending a timely application to appeal to the Supreme Court. The effect of the suspension is so that it would not be breached by anything done by the defendants on or before 31 July 2013. The conditions that it be suspended pending an application for permission to appeal to the Supreme Court are stringent so that the application will be considered as soon as possible.
For the full text of the decisions, click here and here.
ZEE Entertainment Enterprises Ltd v Zeebox, High Court, 7 June 2013
The High Court refused permission for a claimant to conduct a survey in a passing off case, taking into account the detailed guidance on the subject of surveys given by the Court of Appeal in the Interflora v Marks & Spencer case.
For the full text of the decision, click here.
Fine & Country Ltd and others v Okotoks Ltd and others, Court of Appeal, June 2013
The Court of Appeal confirmed that the defendants’ use of the word “Fine” for estate agent services amounted to passing off and trade mark infringement for the claimants’ “Fine & Country” mark. The defendants raised a large number of grounds of appeal including arguments concerning the claimants’ title to sue in passing off, the descriptiveness of the marks and criticisms of the High Court’s evaluation of the evidence. All of these grounds were rejected by the Court of Appeal.
For the full text of the decision, click here.
PATENTS
Vringo Infrastructure Inc v ZTE (UK) Ltd [2013] EWHC 1591 (Pat), 6 June 2013
The High Court considered whether in patent proceedings, licensing issues should be dealt with before issues such as validity and infringement. The claimant, Vringo, argued that this should be the case on the grounds that the underlying issue was how much the licence should be worth. If the court could make a ruling on value, the parties were likely to settle and other issues would not need to be decided. The defendant, ZTE, argued that infringement and validity were the key issues and to the extent that the patents were deemed invalid, ZTE would not need to pay for a licence. It was decided that, as the fundamental dispute centered on whether Vringo’s portfolio had any value at all, and the FRAND trial would be significant in itself, the patents trial should come first.
For the full text of the decision, click here.
COPYRIGHT
VG Wort vs. Kyocera, Epson Deutschland Gmbh, Xerox GmbH, Canon Deutschland GmbH and Fujitsu Technology Solutions GmbH, Hewlett- Packard vs. VG Wort, 27 June 2013
The European Court of Justice held, that “reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some process having similar effects” within the meaning of Article 5 (2) EC Directive 2001/29 include reproductions made by using a printer or a personal computer where the two are linked together. Thus the levy for the reproduction of protected works can be imposed on the sale of a printer or computer. The Member States enjoy a broad discretion to determine who must pay that levy.
For the full text of the decision, click here.
DESIGN RIGHTS
Erich Kastenholz v OHIM, Case T-68/11, 6 June 2013
The EU General Court has confirmed that a registered Community design representing watch dials was valid under the Community Designs Regulation (6/2002/EC) (CDR). The application for invalidity relied on earlier dial designs protected by German copyright law.
For the full text of the decision, click here.
Satco Plastics Ltd v Super Pack Ltd and another [2013] EWPCC 29, 5 June 2013
The Patents County Court has determined that the production of plastic microwave containers in China, that were subsequently imported into the UK, did not amount to a primary infringement of design rights and it has dismissed an action for infringement of unregistered design rights. The court found the argument to be inconsistent with the definition of infringing article in s.228(3) and s.255, as well as the long and well-established tenet that intellectual property rights of the kind in issue are territorial.
For the full text of the decision, click here
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