IP Snapshot – November 2015

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

PATENTS

T-1021/11 PCV2 composition/BOEHRINGER INGELHEIM, 2 June 2015

An appeals board of the European Patent Office (EPO) has permitted one set of claims to contain independent claims in each of the Swiss-type format and the format provided for by Article 54(5) of the revised European Patent Convention (EPC). These are both formats for further medical use claims. No decision to grant the patent had been made by the time that the revised EPC came into force. The applicant then amended the application to additionally include the new type of format claims and this was done within the transitional period specified by the Enlarged Board of Appeal in Decision G 2/08. This meant that the option to include each type of claim was available at the time of the amendment.

The appeals board held that there would be no issue of double-patenting, as the formats differ in their subject matter: the Swiss-type claim is a purpose-limited process claim featuring a manufacturing step, whereas the claim pursuant to Article 54(5) is a product claim. The board considered that having both claims in a single set of claims would not be problematic.

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

Seattle Genetics Inc. v Österreichisches Patentamt, Case C 471/14, 6 October 2015

The CJEU has confirmed that the relevant date for calculating the term of a supplementary protection certificate is the date on which the applicant is notified of the decision to grant the marketing authorisation.

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

TRADE MARKS AND PASSING OFF

BGW Beratungs-Gesellschaft Wirtschaft mbH v Bodo Scholz, Case C-20/14, 22 October 2015

The CJEU has held that where an earlier mark consists of a letter sequence, and a later mark reproduces that letter sequence together with descriptive words, the initial letters of which correspond to the initial letters of the words, such that the sequence is perceived by that public as the acronym of that combination of words there may be – but may also not be – a likelihood of confusion.

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

Flynn Pharma Ltd v Drugsrus Ltd and another [2015] EWHC 2759 (Ch), 6 October 2015

The High Court found that the claimant’s trade mark was infringed by a parallel trader/wholesaler who rebranded and marketed an epilepsy drug in the UK. The usual rules allowing parallel trade within the EEA (subject to certain safeguards) did not apply because the rebranded product had not been placed on the EEA market by the claimant, or with its consent, and therefore its trade mark rights were not exhausted. Contractual arrangements between the claimant and Pfizer, who manufactured the product for the claimant and also manufactured the same product for marketing outside the UK under a different name, did not amount to consent.

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

CTM OPPOSITIONS

The Smiley Company v OHIM, Case T-656/13, 7 October 2015

The Smiley Company applied for the registration of a three-dimensional Community trade mark of a smiling face with heart-shaped eyes. Upon appeal, the EU General Court upheld the decision of the OHIM Board of Appeal against The Smiley Company’s registration of the mark, agreeing that the mark was non-distinctive for the types of goods (various foodstuffs) which the mark was to cover. The Court noted that the practice of using geometric shapes embellished with a decorative element was common for these goods. The relevant consumers were therefore not likely to perceive the applied for mark as identifying the origin of the goods.

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

Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Uslugowo-Produkcyjna v OHIM, Case T-364/13, 30 September 2015

The EU General Court has dismissed an appeal against an OHIM Board of Appeal decision that a figurative mark should not be registered, as there was a likelihood of confusion between it and an earlier mark (both contained a crocodilian motif).

The Court found that the marks were visually similar. While the mark applied for shows a crocodile in a stylised manner with the torso made up of a word, whereas the earlier mark is a realistic representation of a crocodile in a different position, these visual differences would not sufficiently affect the visual perception of the marks. The presence of the verbal element in the mark applied for did not neutralise the similarity. Due to the imperfect recollection of marks by consumers, it was likely that both marks would create the same effect when remembered by a consumer. Further, the Court held that there was average conceptual similarity.

The Court also held that the earlier mark had acquired a highly distinctive character through use in respect of leather goods (the type of goods to be covered by the applied for mark).

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

Enosi Mastichoparagogon Chiou v OHIM, Case T-309/13, 22 October 2015

The EU General Court has upheld a decision of the OHIM Board of Appeal that there was a likelihood of confusion between the applied for word mark “ELMA” and the earlier mark “ELMEX” in respect of the relevant goods.

The Court considered that goods are not automatically dissimilar because they appear in different Nice Classes. The Court noted that, although in different classes, the selection of goods covered by each mark contributed to dental and oral hygiene and care and would be likely to share the same distribution channels. The goods were therefore highly similar.

The Court held that there was an average degree of visual and phonetic similarity. The marks are both relatively short word signs. The marks differ only in their end letters, while the first parts are identical. The Court held that the difference between the end letters would not be sufficient to counterbalance the similarity.

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

Vimeo LLC v OHIM, Case T-96/14, 23 October 2015

The EU General Court has confirmed the likelihood of confusion between an applied for word mark “VIMEO” and the earlier figurative mark “MEO”. The Court held that the goods are partly identical and partly similar and that there was a certain degree of both visual and phonetic similarity between the marks.

The Court confirmed that the absence of a likelihood of confusion could be inferred from the peaceful coexistence of two marks on a particular market. However, in order to demonstrate this, the applicant must submit evidence that such coexistence was based on the absence of any likelihood of confusion between the marks. This means evidence to support a finding that consumers of both sets of products did not confuse them before the application for the VIMEO mark was filed. Although the applicant submitted evidence that both marks had coexisted since 2006, the Court held that the peaceful coexistence of the marks had not been established sufficiently for it to be taken into account when assessing likelihood of confusion.

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

GENERAL IP

T & A Textiles and Hosiery Ltd v Hala Textile UK Ltd and others [2015] EWHC 2888 (IPEC), 23 October 2015

The Intellectual Property Enterprise Court has dismissed the claimant's action for copyright infringement in relation to artistic works in bed linen, and registered design right infringement of a packaging label. The Court found that, on the evidence, the alleged infringing designs had been imported into the UK prior to the creation of the claimant’s designs. Further, the claimant’s registered design right was held to be invalid as the defendants’ packaging was available to the public prior to the registration of the design.

In addition, the Court allowed the defendants' counterclaim for unjustified threats of registered design infringement made to the defendants’ customers and to eBay via the website’s Verified Rights Owner (VeRO) system. Although it was not so clear whether the initial letter sent to eBay via the VeRO system was a threat or a mere notice of infringement, the Court found that the second letter to eBay was a clear threat, in particular as it was written by solicitors and specifically cited the registered design and court proceedings.

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