IP Snapshot – January 2015

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

PATENTS

Stretchline v H&M (UK) [2014] EWHC 3605 (Ch), 14 October 2014

The High Court has allowed an application by Stretchline to strike-out a part of H&M’s defence on the basis that it had already been dealt with in the settlement of an earlier action between the parties. Stretchline had previously brought an action against H&M for patent infringement and, as part of its defence, H&M had asserted grounds of invalidity of the patent and also included a counterclaim for revocation of the patent. These initial proceedings were settled and, in the later action, Sales J. ruled that H&M was precluded by the terms of the settlement agreement from raising the same defence again.

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

Lantana Ltd v Comptroller-General of Patents, Designs and Trade Marks [2014] EWCA Civ 1463, 13 November 2014

The Court of Appeal has upheld the decision of the High Court that a patent application for a method of transferring data between two computers had been properly refused. The Court held that the application was directed to a program for a computer which was unpatentable by virtue of section 1(2)(c) of the Patents Act 1977. Although section 1(2)(c) was not an absolute prohibition on the patentability of computer programs, since the invention in question did not provide a technical contribution beyond that of a mere program running on a conventional computer, it was held to fall within the exclusion to patentability in that section.

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


Jarden Consumer Solutions (Europe) Ltd v SEB SA [2014] EWCA Civ 1629, 17 December 2014

The Court of Appeal has allowed an appeal against a decision of patent infringement relating to apparatus for food frying machines. The Court held that the trial judge failed to properly construe the patent claims, relying on the reference numerals in the patent not simply to identify the parts of the patented apparatus, but to construe the claims themselves and extend the scope of the patent. This was impermissible and the appeal on this point was allowed. The Court held, however, that the trial judge had been right to conclude that the patent was not obvious over an earlier German invention.

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

International Stem Cell Corporation v Comptroller General of Patents, Case C-364/13, 18 December 2014
The CJEU has followed the opinion of the Advocate General given on the question referred to the ECJ by the High Court in the International Stem Cell Corporation patent case. The CJEU has ruled that the decision in Oliver Brüstle v Greenpeace eV, C-34/10, to the extent that it equated unfertilised ova (which were incapable of developing into a human being unless genetically modified) with fertilised ova, appeared to have been based on incorrect facts provided to the court. Applying the general principle laid down in that case, parthenotes were not human embryos and not within the exclusion from patentability in Article 6(2)(c) of the Biotechnology Directive.

The question whether, in any particular case, a parthenote has the inherent capacity to develop into a human being is for the national court to decide, taking into account the scientific knowledge current at the time.

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

TRADE MARKS AND PASSING OFF

Interflora Inc and another v Marks and Spencer plc [2014] EWCA Civ 1403, 5 November 2014

The Court of Appeal has overturned the High Court’s judgment of May 2013, which had found that use of keyword advertising by Marks & Spencer infringed Interflora’s trade marks, and in a highly unusual move, has ordered a retrial of the case by the High Court. The trial judge, Mr Justice Arnold, was found to have erred in law in his approach in a number of ways. However, the Court of Appeal felt unable to substitute its own judgment as it had not reviewed all of the documents and had not heard the oral evidence of witnesses at trial, so decided to order a retrial.

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

Intra-Presse SAS v OHIM and Golden Balls Ltd, Joined Cases C-581/13P and C-582/13P, 20 November 2014

The CJEU has annulled a judgment of the General Court, which had held that the signs GOLDEN BALLS and BALLON D’OR were insufficiently similar for a CTM application for GOLDEN BALLS to be rejected on relative grounds on the basis of an earlier registration for BALLON D’OR. The CJEU also held that the OHIM Board of Appeal was wrong to have failed to consider Article 8(5) of the CTM Regulation on the basis that a lack of similarity between the marks for the purposes of Article 8(1)(b) meant that there was insufficient similarity between the marks under Article 8(5). The CJEU noted that the test for similarity under Article 8(1)(b) was confusion on the part of the relevant public, whereas all Article 8(5) requires is that a link be made between the two signs, which is a lower threshold. The opposition has been referred back to the OHIM Boards of Appeal to consider whether any such link would be made.

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

Simba Toys GmbH & Co, KG v OHIM, Case T-450/09, 25 November 2014

The EU General Court has dismissed an appeal against the rejection of a declaration of invalidity for the registration of a three dimensional Community trade mark representing a Rubik’s cube. The EU General Court considered that the graphical representation of the mark did not suggest that the shape of the mark was necessary to perform a technical function or that it resulted from the nature of the goods themselves. In particular, the Court considered that the rotating capability of the cube did not result from the black lines in grid format on the surface of the shape and that it was not possible to discern this capability from the mark’s graphical representation. The Court also rejected the argument that the mark was devoid of distinctive character, holding that the grid structure did not constitute the norm of the 3D puzzle sector.

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

Dalsouple Societe Saumuroise du Caoutchouc v Dalsouple Direct Ltd and another [2014] EWHC 3963 (Ch), 1 December 2014

The High Court upheld the decision of the IPO in finding that a French trade mark owner (the appellant) had previously consented to the respondent’s registration of the mark DALSOUPLE in the UK at a time when the respondent was the exclusive supplier of DALSOUPLE goods in the UK. Consequently, the French company's attempt to register its own mark for DALSOUPLE in the UK failed.

Although the decision in this case was fact dependent, it is noteworthy for its consideration of the meaning of "consent" under Article 4(5) of the Trade Marks Directive, which was held to be the same as that under Article 7(1), which the CJEU had considered in the parallel imports case of Zino Davidoff SA v A & G Imports Ltd in 2001. It also demonstrates the importance of a brand owner retaining control over the registration of its own brand and expressly providing that it owns goodwill arising from the activities of its agents or distributors in other countries.

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

Inter-Union Tecknohandel GmbH v OHIM, Case T-278/12, 9 December 2014

The EU General Court annulled the OHIM Board of Appeal’s earlier decision that the opponent to an application for registration of a CTM had not proved genuine use of the earlier mark which they were relying on in their opposition. The EU General Court found that the Board of Appeal had erred in its analysis of the evidence adduced by the opponent in supporting the genuine use of their earlier mark. The Court held that the Board of Appeal had been under a duty to consider a signed affidavit provided by the opponent within the context of the other forms of evidence supplied, whereas the board had assessed each piece of evidence on the basis of its individual probative value alone.

The Court also held that the Board of Appeal had erred in its judgement when ascribing no probative value (in terms of establishing genuine earlier use) to three product comparison articles that had featured goods marketed under the earlier mark. The Court held that the function of these articles was sufficiently different to that of simple advertisements to mean that they could have probative value attributed to them.

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

Coca-Cola v OHIM, Case T-480/12, 11 December 2014

The EU General Court (EUGC) has annulled a decision of the Second Board of Appeal of OHIM in opposition proceedings between The Coca-Cola Company and Modern Industrial & Trading Investment Co. Ltd. The EUGC agreed with the Board that a link or similarity found for the purposes of Article 8(1)(b) was a precondition for the application of Article 8(5) and therefore the Board was right to find that, if the marks at issue were not similar, they could conclude that Article 8(5) was not applicable without having to consider the case law. However, the EUGC considered there to be a number of factors in the case law that were relevant to establish a link between the marks for the purposes of Articles 8(1)(b) and (5) which the Board had not taken into account. In particular: (i) whether the marks are identical or similar at issue, and the degree of similarity between them; (ii) whether the earlier mark cited in opposition has a reputation; and (iii) whether there is a risk that use of the mark applied for would take unfair advantage of, or cause detriment to, the distinctive character of the earlier trade mark.

The EUGC annulled Board’s decision on the basis that there was similarity between the signs at issue and a risk of free-riding on the coat-tails of Coca-Cola’s famous mark.

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

DESIGNS

DKH Retail Ltd v H Young (Operations) Ltd [2014] EWHC 4034, 8 December 2014

In this case before IPEC, Hacon J. has held that H Young (Operations) Limited is liable for infringement of DKH Retail Limited’s UK unregistered design rights and Community unregistered designs in its “Academy” gilet. In doing so, Hacon J. has provided some useful guidance on the effect of section 1(1) of the Intellectual Property Act 2014, amending the definition of a design under the Copyright, Designs and Patents Act 1988.

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

COPYRIGHT

Omnibill (Pty) Ltd v EGPSXXX Ltd (in liquidation) [2014] EWHC 3762 (IPEC), 17 November 2014

The Intellectual Property Enterprise Court has held that a website was targeted at the public in the UK, despite offering services in South Africa. Of particular importance was the fact that the visitor traffic data showed that a substantial proportion of visitors to the site were from the UK. The Court held that both the company operating the website and its sole director were liable for copyright infringement in respect of photographs reproduced on the website.

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