IP Snapshot – March 2015

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

PATENTS

Merck Canada Inc. and another v Sigma Pharmaceuticals plc, C-539/13, 12 February 2015

This case arose from a dispute in the English courts concerning parallel trade between Merck and Sigma Pharmaceuticals which was referred to the CJEU. It was common ground that the “Specific Mechanism” (an exception to freedom of movement of goods principles arising from the Accession Treaty relating to EU expansion in 2004) applied to importation into the UK of Merck product from Poland. However, the parties disagreed on its interpretation and the extent to which Merck could enforce its patent and SPC rights against Sigma. The CJEU has answered several questions which cover the rights of the patent holder and also the mechanics of the notification procedure prescribed by the Specific Mechanism.

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

Global Flood Defence Systems and another v Van den Noort Innovations BV and others [2015] EWHC 153(IPEC), 29 January 2015

Judge Hacon has dismissed an application for summary judgment brought against the defendants in an action for groundless threats of patent infringement proceedings notwithstanding the fact that the patent relied on is yet to be granted. This decision was based on the fact that where a threat relates to rights under section 69 of the Patents Act 1977, then it must be possible to justify such a threat if the acts complained of would constitute an infringement of the patent (if granted) and if the patent is granted before trial.

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

TRADE MARKS AND PASSING OFF

Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd and another [2015] EWCA Civ 54, 6 February 2015

The Court of Appeal overturned the decision of the High Court and found that an exclusive distributor of a branded pharmaceutical could not object to the repackaging of the product by an importer, which had replaced the trade mark of the country of origin with the trade mark used by the brand owner in the UK. It was “necessary” for the importer to do so in order to access all parts of the UK market and it was not reasonable to expect the importer to invest in its own brand in order to market the product. The outcome is fact dependent and does not affect the well-established principles of EU law.

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

Now Wireless Ltd v OHIM, Case T-278/13, 30 January 2015

The EU General Court (“EUGC”) has agreed with the OHIM Board of Appeal's decision that there was “genuine use” of a figurative Community trade mark (“CTM”) relating to services in class 42, under Article 51(1) of the Community Trade Mark Regulation (the “Regulation”) and that therefore the CTM should not be revoked.

The EUGC considered that enough evidence was provided by the CTM owner to demonstrate use of the CTM. The EUGC also rejected the argument that it would be necessary to divide the services for which the protection was sought (electronic network access services) into sub-categories as the EUGC considered that the relevant consumer would rely on all the services as a bundle for the overall purpose of accessing electronic networks.

The EUGC also found that the CTM owner could rely on use of the CTM by its licensee, which was also a group company, as proof of genuine use. Finally, the EUGC held that use of the CTM in London and the Thames Valley area was sufficient to constitute genuine use in the EU.

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

Enterprise v Europcar [2015] EWHC 300 (Ch), 11 February 2015

Europcar used an ‘e’ logo similar to that of Enterprise’s ‘e’ CTM for car rental.

The High Court found this to amount to trade mark infringement and ruled to restrict the territorial scope of the grant of an injunction and a damages enquiry to the UK. Arnold J felt that the CJEU's ruling in DHL Express v Chronopost was unclear as to whether an injunction should be granted across the whole of the EU in cases of likelihood of confusion or dilution. He also explained that even if it should, the claimant had in this case restricted the geographic scope of the action due to insufficient evidence that the use of the ‘e’ logo affected, or was liable to affect, the functions of the CTM in any Member State other than the UK. Therefore one of the two permitted exceptions in DHL Express to the requirement of an EU-wide prohibition applied, and the injunction had to be limited in geographic scope.

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

COMMUNITY TRADE MARK OPPOSITIONS

El Corte Inglés, SA v OHIM, Case T‑372/12, 4 February 2015

The EU General Court has upheld an OHIM Board of Appeal decision that there was no likelihood of confusion under Article 8(1)(b) of the Regulation (207/2009/EC) between a CTM application for figurative mark APRO and certain earlier rights, including a Spanish figurative trade mark for B-PRO. The CTM for APRO covers bikes, folding bikes, electric bikes and bike accessories.

It was held that as the similarity between the signs was either weak or very weak, there was no likelihood of confusion.

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

Türkiye Garanti Bankasi, AS v OHIM, Case T-33/13, 5 February 2015

The EU General Court has overturned an OHIM Board of Appeal's decision that there was no likelihood of confusion under Article 8(1)(b) of the Regulation between a CTM application for a figurative mark BONUS & MORE for a range of business services, and an earlier international figurative mark for BONUS NET, also registered for business services.

It was held that the Board of Appeal was wrong to conclude that there was no likelihood of confusion. Given the similarity of the signs, Board of Appeal should have assessed whether the services were similar or identical and carried out an analysis of the existence of the likelihood of confusion.

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

Red Bull GmbH v OHIM, Case T-78/13, 5 February 2015

Annulling a decision of an OHIM Board of Appeal, the EU General Court has upheld an opposition to registration of the word mark BULLDOG based on the earlier word mark BULL, registered for identical goods. It was held that, despite conducting a comparison between the two marks, the Board of Appeal had failed to consider the fact that the goods at issue were identical.

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

COPYRIGHT

Fresh Trading Ltd v Deepend Fresh Recovery Ltd and another [2015] EWHC 52 (Ch), 26 January 2015

The High Court has granted a declaration that Fresh Trading Ltd, which ran the INNOCENT smoothie business, was the owner of copyright in its main brand logo. Fresh Trading had commissioned the logo from a design agency (which subsequently went into liquidation), under a consultancy agreement. Intellectual property rights in the logo designed pursuant to the agreement was purportedly purchased by a third party who assigned that interest to a company. This company obtained a declaration of invalidity of Fresh Trading's CTM registration of the logo, based on an alleged ownership of copyright in the same logo.

The consultancy agreement was never signed and therefore the judge ruled there had been no effective legal assignment of copyright. However, the judge did find that there had been an equitable assignment as the agreement stated that copyright would pass on approval, which had occurred.

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

Christie's France SNC v Syndicat National des Antiquaires, Case C-41/14, 26 February 2015

The CJEU has ruled that under Article 1(4) of the Resale Right Directive (2001/84/EC) the person responsible for ensuring that the resale royalty is paid to an artist under national law is free to agree with any other person, including a buyer of the relevant work, for that other person to bear the cost of the royalty.

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