IP Snapshot - February 2015

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

PATENTS

Gambro Lundia, Case T-0073/10 EPO Technical Board of Appeal, 24 October 2014

The EPO has confirmed that the “second medical use” provisions of Art 54 of the European Patent Convention (EPC) do not apply to medical devices as opposed to “substances or compositions”, resulting in the inability to patent a medical device which was previously known but applied to a new use, due to lack of novelty. Although the outcome may seem unfair to patentees of medical devices, the EPO commented in its decision that it was not the Board’s duty to draft legal provisions, nor was it within its competence to evaluate the arguments about how desirable or equitable patent protection for any medical product may or may not be.

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

Warner-Lambert LLC v Actavis Group PTC EHF and others [2015] EWHC 72 (Pat), 21 January 2015

The High Court has refused to grant an interim injunction that Warner-Lambert had requested against Actavis. The order sought to prevent alleged infringement by Actavis of Warner-Lambert’s second medical use patent for pregabalin in the treatment of neuropathic pain, by marketing Lecaent, a generic version of the drug. The decision is significant because it is the first time a UK court has dealt comprehensively with second medical use claims and it provides guidance on some of the key issues faced by both patentees and generic competitors as well as discussing policies and practices relating to how medicines are prescribed.

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

To read our LawNow on this decision, please click here.

TRADE MARKS AND PASSING OFF

Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch), 13 January 2015

Arnold J has upheld a claim against Europcar brought by Enterprise on the basis of its registered trade marks for a stylised depiction of the letter “e”. Despite Enterprise’s mark consisting of a single letter, which might on the face of it be thought to have only limited distinctiveness, and the low similarity of the marks, Arnold J was satisfied that Enterprise’s marks enjoyed a fairly high level of inherent distinctive character which was boosted by substantial evidence of acquired distinctiveness. Further, considering Europcar’s use of the mark and extensive evidence of actual confusion among consumers, a likelihood of confusion was established. Enterprise also succeeded in its passing off claim, though its claims of dilution and free-riding were rejected.

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

Pro-Aqua International GmbH v OHIM, Case T 133/13, 22 January 2015

The European General Court (“EUGC”) has rejected an application for a declaration of invalidity for the Community trade mark WET DUST CAN'T FLY. The applicant argued that the mark was descriptive and devoid of distinctive character. The EUGC considered that the expression "wet dust can't fly" did not describe the goods and services in question, since they did not use water as part of their operation. The EUGC also considered that the expression was not a conventional way of describing how the relevant cleaning appliances and tools functioned. In relation to distinctiveness, the applicant failed to provide evidence that the words "dust" and "wet" were commonly used together in the context of filters or cleaning systems. The EUGC further concluded that, as dust was no longer dust when it became wet, the two words together gave the mark a fanciful and distinctive character, thereby giving the expression a degree of originality and a certain resonance which had the effect of setting off a cognitive process in the mind of the relevant consumer.

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

Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3, 22 January 2015

The Court of Appeal has upheld the High Court’s judgement against Topshop in this landmark test case, reinforcing the ability of celebrities to control the use of their public image. In 2012 the popular fashion retailer Topshop had started selling a sleeveless shirt bearing a distinctive image of the singer Rihanna which was derived from a photograph taken of her during a video shoot for one of her albums. Rihanna originally brought proceedings claiming that the use of the image would imply to consumers that she had endorsed or authorised the product and that the actions of Topshop therefore amounted to passing off. After the High Court had found in her favour Topshop brought an appeal. Kitchin LJ. dismissed the appeal on all grounds and held that the judge at first instance had been entitled to find that the actions of Topshop amounted to passing off.

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

DESIGNS

Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat), 17 December 2014

The High Court has held that the registered and unregistered design rights subsisting in a design for an ice cream van were valid and infringed by the Defendants. The Defendants admitted at trial that they had copied the design of the van. Although there were minor differences between the Defendants’ van and the Claimant’s designs, the Court considered that they were very similar and therefore infringement had occurred. The Defendants were also liable for trade mark infringement as a result of directly copying one of the panels of the body of the van, which bore the Claimant’s mark.

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

Aic v OHIM - ACV Manufacturing, Case T-615/13; Case T-616/13 and Case T-617/13, 20 January 2015

The General Court has upheld several related decisions of the Third Board of Appeal of OHIM, concluding that a Community registered design for a heat exchanger was invalid on the basis that it did not meet the requirements of Article 4(2) of the Community Design Regulation. Article 4(2) requires that any component part, once incorporated into a complex product, should remain visible during normal use of that product. As a part of a complex product (namely a household boiler), no part of the heat exchanger was visible after its installation and during normal use.

For the full text of the decisions, please click the links below:
http://www.bailii.org/eu/cases/EUECJ/2015/T61513.html
http://www.bailii.org/eu/cases/EUECJ/2015/T61613.html
http://www.bailii.org/eu/cases/EUECJ/2015/T61713.html

COPYRIGHT

Ryanair Ltd v PR Aviation BV, Case C-30/14, 15 January 2015

In a case involving screen-scraping flight data from the claimant’s website, contrary to the terms and conditions stated therein, the CJEU has ruled that the Database Directive 96/9/EC does not apply to a database that is not protected by copyright or separate database right. Although Articles 6 and 8 of the Directive authorise the performance of certain acts which would otherwise infringe copyright and database rights under the Directive, the CJEU held that the provisions of the Directive did not stop the creator of the database from imposing contractual terms and conditions on its use by third parties, provided that any contractual limitations complied with applicable national laws.

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

McCormack Training Ltd v Goldmark Training Services Ltd and others [2015] EWHC 41 (IPEC), 16 January 2015

The Intellectual Property Enterprise Court has ruled in a copyright dispute relating to the claimant’s manual used in the security industry. Hacon J. found that the defendants had infringed copyright in certain photographs, but not in text box notes (considered as literary works) or techniques for physical restraint. Hacon J. accepted that copyright was capable of subsisting in a physical restraint technique and in a sequence of techniques as dramatic works. However, on the facts the claimant’s case failed since it relied on defining such works by means of a collection of photographs, which Hacon J. held were not sufficient to record a sequence of techniques and create copyright in an overall dramatic work.

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

Pez Hejduk v EnergieAgentur.NRW GmbH, Case C‑441/13, 22 January 2015

The ECJ has ruled on a question referred by the Austrian courts in relation to where a copyright owner can bring proceedings where the protected works have been made available online for viewing and downloading by a third party in another Member State. A professional photographer was suing a company for placing their photos on their website without their consent. The company argued that Austrian courts did not have jurisdiction as the website used a German top-level domain and was not directed at Austrians. Following Pinckney, the ECJ ruled that under Article 5(3) of Regulation 44/2001, proceedings could be brought in another Member State if the relevant website could be accessed in that Member State regardless of whether the website was targeted at that Member State. The ECJ also held that the Member State court could only rule on the extent of damage within its own jurisdiction. The ruling is significant as it has the potential to increase the number of online infringement claims, especially given the ease at which works such as photographs can be viewed and downloaded from websites.

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

Art & Allposters International BV v Stichting Pictoright, Case C-419/13, 22 January 2015

The CJEU has issued its much anticipated decision regarding exhaustion of the distribution right set out in Article 4 of Directive 2001/29/EC. The CJEU was asked to determine whether the rule of exhaustion in Article 4 (2) of the Directive still applied in a situation where a reproduction of a protected work that had previously been marketed in the European Union with the copyright holder’s consent had since undergone an alteration of its medium. The CJEU found in essence that the rule of exhaustion did not apply in such a scenario. The distribution right would only be exhausted upon the first sale with the copyright holder’s consent of the work as incorporated into that specific new medium.

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