IP Snapshot – October 2014

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

PATENTS

Alpha-ketoglutaric acid and pharmaceutically acceptable salts thereof for use in increasing HDL plasma levels/PROTISTA, Case T 1570/09, 16 May 2014

The Technical Board of Appeal of the European Patent Office (EPO) has held that, where a set of patent claims included a purpose-limited claim for a second therapeutic use of a known product, permissible under the European Patent Convention (EPC) 2000, the applicant could not also have a Swiss-type claim for the same product and use.

Swiss-type claims had been permitted following the EPO Enlarged Board of Appeal decision in G 5/83 to fill a lacuna in the old law (EPC 1973) which would have otherwise precluded claims for second therapeutic indications of known medicaments on the grounds of lack of novelty.

The Board of Appeal confirmed that although it was theoretically possible that the scope of protection under Article 69 EPC conferred to the patentee could vary depending on the differing interpretations of the national courts, this was not a reason for allowing Swiss-type form claims where there was no longer any legal reason for permitting them.

Since Protista was entitled to a purpose-limited claim under Article 54(5) EPC 2000, it was not also entitled to a Swiss-type claim for the same product and use.

For the full text of the decision, please click here.


TRADE MARKS AND PASSING OFF

Hauck GmbH & Co KG v Stokke A/S and others, Case C-205/13, 18 September 2014

The CJEU has provided its judgment in the ‘Tripp Trapp’ case, supporting the opinion of the Advocate General. This decision therefore provides some much needed clarity on the application the grounds of refusal for shape marks in Article 3(1)(e). In particular, this decision establishes that the grounds under Article 3(1)(e) operate independently of one another.

For the full text of the decision, please click here.

Cranford Community College v Cranford College Limited [2014] EWHC 2999 (IPEC), 19 September 2014

The Intellectual Property Enterprise Court (IPEC) rejected an action for passing off brought by Cranford Community College (CCC) against Cranford College Ltd (CCL) on the basis that it had failed to demonstrate there was sufficient goodwill associated with any of the names or logos in question or that the relevant public held them as being distinctive of CCC’s service.

For the full text of the decision, please click here.

Giorgio Giorgis v OHIM, Case T – 474/12, 25 September 2014

The EU General Court dismissed an appeal against a decision of the OHIM Board of Appeal in which it held that a 3D Community trade mark registered for desserts, ice creams, sorbets and yoghurts was devoid of distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation (207/2009/EC) as it did not depart significantly from the norms and customs of the sector. The EU General Court also held that the CTM had failed to acquire distinctive character through use in accordance with Article 7(3) of the Regulation as the applicant did not provide sufficient evidence to demonstrate that the relevant public would use the mark as an indication of commercial origin.

For the full text of the decision, please click here.

DESIGNS

Cassie Creations Ltd v Blackmore and another [2014] EWHC 2941 (Ch), 25 July 2014

The High Court has considered whether a Notice of Claimed Infringement sent pursuant to eBay’s Verified Rights Owner (VeRO) scheme could constitute a groundless threat under design rights legislation. The VeRO scheme is a system through which rights owners can notify eBay of products being sold on the site which infringe their IP rights. In the hearing of the defendants’ application for strike out and the claimant’s application for summary judgment, the Court held that this was a matter that should proceed to trial, refusing both applications. However, the judge indicated that he found the Claimant’s arguments that the VeRO notice did amount to a threat to be more persuasive. The VeRO scheme should be used with caution to avoid inadvertently making groundless threats.

For the full text of the decision, please click here.

COPYRIGHT

Johan Deckmyn v Vandersteen and others, Case C-201/13, 3 September 2014

The ECJ has set out the first detailed guidance in relation to the exception to copyright for the purposes of parody under Article 5(3)(k) of the Copyright Directive 2001/29/EC.

The ECJ has ruled that the essential characteristics of a parody are that it evokes an existing work while being noticeably different from it, and constitutes an expression of humour or mockery. The court also confirmed that the concept of parody under Article 5(3)(k) was not subject to any of the conditions as set out by the referring court in its questions: namely, that the parody should display an original character of its own, other than that of displaying noticeable differences with respect to the original parodied work; that it could reasonably be attributed to a person other than the author of the original work itself; or that it should relate to the original work itself or mention the source of the parodied work.

The ECJ's requirements both include elements of subjectivity, and this, together with the need to apply the "fair balance" test mean that in practice, much will be left for national courts to decide.

The guidance is likely to be useful now that provisions for the new parody exception are in force in the UK by means of the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014.

For the full text of the decision, please click here.

Technische Universität Darmstadt v Eugen Ulmer KG, CJEU, Case C-117/13, 11 September 2014

The CJEU has given a decision on the interpretation of Article 5(3)(n) of the Copyright Directive, under which Member States may provide that the communication or making available of works not subject to purchase or licensing terms for the purpose of research or private study by establishments such as libraries, using terminals on their premises, does not infringe copyright.

The CJEU held that the purchase or licensing terms had to actually be in force, and not merely be offered in order to exclude the exception and, subject to meeting certain conditions, the act of digitisation which is required to make the work available is implicitly within the exception. However, the printing of copies, or saving them on to USB sticks, by users of the terminals, was not within the exception, though might be within other exceptions, depending on whether they had been implemented in the Member State concerned.

For the full text of the decision, please click here.