IP Snapshot - June 2015

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

PATENTS

Kingdom of Spain v Council of the European Union, Case C-146/13 and C-147/13, 5 May 2015

The CJEU has rejected Spain’s two challenges to the EU legislation governing the unitary patent, confirming that the legislation is valid. In May 2013, Spain filed two challenges in the CJEU against the unitary patent regulation (Regulation (EU) 1257/2012) and the regulation on translation arrangements (Regulation (EU) 1260/2012). This followed a rejection by the CJEU in April 2013 of previous challenges brought by Spain and Italy. Spain challenged the regulations on several further grounds including a lack of legal basis and breach of the principles of EU law. The CJEU dismissed both actions in their entirety, removing the last legal challenges to the unitary patent package. The package can now progress to implementation once a sufficient number of Member States have ratified the Unified Patent Court Agreement.

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

Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz UK Ltd [2015] EWCA Civ 516, 22 May 2015

The Court of Appeal upheld the High Court's decision that a settlement agreement, resolving an earlier patent infringement action brought by Stretchline against H&M, precluded H&M from raising a defence and counterclaim that the patent was invalid under new proceedings.

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

TRADE MARKS AND PASSING OFF

Starbucks (HK) Limited and another v British Sky Broadcasting Group PLC and others [2015] UKSC 31, 13 May 2015

In a rare judgment of the Supreme Court on a passing off matter, it has been confirmed that reputation alone is an insufficient basis for a claim of passing off and that goodwill in the UK is required. Consequently, an appeal by a Hong Kong company, Starbucks (HK) Limited, against BSkyB, concerning the brand NOW TV, was dismissed. The judgment highlights the diversity in approach to passing off cases across common law jurisdictions.

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

Skype Ultd v OHIM, Case T-183/13, Case T-184/13 and Case T-423/12, 5 May 2015

The EU General Court has upheld three decisions by OHIM Boards of Appeal that found a likelihood of confusion under Article 8(1)(b) of the CTM Regulation between the word sign and figurative sign including the word “SKYPE” and the word sign “SKY”. All signs were applied for in relation to goods and services identical to those for which it had been used.

Skype argued that the signs were not similar due to a “secondary meaning” SKYPE had acquired for the goods and services for which they were registered. However, the General Court rejected this argument. The secondary meaning was “nothing other than the distinctiveness of the sign acquired through use”. If SKYPE had become synonymous with the goods and services provided with it, this would make it unsuitable for registration as it would be deemed to be descriptive. This is a surprising decision, as the same could predominately be said of any trade mark which is distinctive for goods or services.

Skype also argued that there was an absence of a likelihood of confusion due to the peaceful coexistence of the signs and the mark. The General Court dismissed this argument because the period of coexistence was only 22 months, and the activities in question were not part of Sky’s core business. This was insufficient to assume that there was no likelihood of confusion.

Lastly, the General Court rejected Skype’s argument that there was no likelihood of confusion between the signs as Sky had not previously brought any infringement proceedings against Skype. The lack of infringement proceedings did not rule out any possible likelihood of confusion as the fact that Sky did not bring any infringement proceedings against Skype could be based on a variety of reasons and would not necessarily mean that Sky believed there to be no likelihood of confusion between the marks at issue.

For the full text of the decisions, please click here, here and here.

To read our Law-Now on this case, please click here.

Voss of Norway ASA v OHIM, Case C-445/13 P, 7 May 2015

The CJEU has upheld decisions of the OHIM Board of Appeal and the General Court that Voss’s registration for the shape of a water bottle lacked sufficient distinctive character to be registered as a CTM and should therefore be invalidated.

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

DESIGNS

Senz Technologies BV v OHIM, Joined Cases T-22/13 and T-23/13, 21 May 2015

The General Court has overturned a decision of the Third Board of Appeal of OHIM, finding that two designs for an asymmetrical umbrella produce a different overall impression on the informed user when compared with an earlier design shown in a US patent. The case further demonstrates that US patents can become known to the circles specialised in the sector concerned in the EU and the onus is on the applicant to prove otherwise.

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

COPYRIGHT

Direct Sales Srl and another v Knoll International SpA, Case C‑516/13, 13 May 2015

In this case, the CJEU ruled on the meaning of the distribution right under Article 4(1) of the Copyright Directive (2001/29/EC). The ruling considers whether a concluded sale is needed to satisfy Article 4(1) where the alleged infringer has offered a copyright work for sale or issued a targeted advertisement of the work, and represents a development of the previous law.

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

Bodo Sperlein Limited v Sabichi Limited and another [2015] EWHC 1242 (IPEC), 8 May 2015

The Intellectual Property Enterprise Court upheld a claim for infringement of copyright in a surface design for ceramic tableware. The defendants’ ceramic tableware design, “Red Blossom”, was imported into and sold in the UK at the same time as the claimant was selling its ceramic tableware design - “Red Berry”.

The judge did accept there were some differences between the two designs. However, he found very close similarities between the two designs, so much so that he struggled to tell them apart without close inspection. This created a robust argument of copying of a substantial part of the claimant's design which the defendants failed to rebut.

The defendants’ witness evidence claiming independent design was rejected by the judge after cross-examination. The defendants’ knowledge of the Red Berry design meant that they could not be considered entirely innocent infringers. Therefore they could not avoid liability for damages as a result of their infringement.

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