Briefings

27 May 2020 topical Sky v SkyKick The High Court has issued its decision in the Sky v SkyKick case. The judgment follows the Advocate General’s opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services. Read more

9 April 2019 topical EPO Plant Patent-Eligibility Update – Political Pressure Brings Further Uncertainty for Applicants Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO’s Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how... Read more

18 December 2018 topical Warner Lambert v Actavis: Supreme Court Considers Medical Use Claims The Supreme Court in the UK handed down its decision in Warner-Lambert v Actavis on 14th November 2018 (and a copy of the complete decision is available here). The Supreme Court considered the following issues in its judgment: how much data is required in the application as originally filed to support a second medical use claim; and the circumstances under which “cross label... Read more

4 October 2018 topical Company Names and Trade Mark Infringement – The UK Company Names Tribunal The Company Names Tribunal (CNT) was established on 1 October 2008 in order to provide brand owners with a cost-effective method of enforcing their trade marks against the registration of similar company names. The CNT has proven a useful tool against so-called “opportunistic” company name registrations, although there are some limitations to what it can achieve. Read more

26 April 2018 topical Functional Designs in Europe – A New Approach to Judging Functionality Design law in Europe Design law in Europe has long sought to deny protection to “functional” designs but stops short of requiring that a design must have an aesthetic quality. This is achieved in the Community Designs Regulations 6/2002/EC (CDR), Article 8(1), by denying protection to designs which are “solely dictated by [a product’s] technical function”. Read more

4 April 2018 topical Obscure Disclosures – Burden of Proof is on the Right Holder The novelty requirements for EU registered designs have peculiar provisions aiming to protect the validity of designs from obscure disclosures outside the EU. The Crocs case (T-651/16) provides some pointers as to when an internet disclosure might be considered obscure but holds that there is a presumption that a website will have been seen by someone from the relevant sector... Read more

21 July 2017 topical Lilly v Actavis – Supreme Court Introduces a Doctrine of Equivalents in the UK The UK Supreme Court’s judgment in Lilly v Actavis has profound implications for the scope of protection provided by patent claims in the UK. The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims... Read more

31 May 2017 topical Patent Box for the Software Industry The software industry has been a major beneficiary of the R&D tax credit regime in the UK. Although more obviously suited to the manufacturing and pharmaceutical industries, the software industry can also benefit from UK Patent Box legislation. One aim of the Patent Box legislation is to provide an additional incentive to locate in the UK high-value jobs associated with... Read more

17 March 2017 topical Court of Appeal Divided Over Use of ‘Own Name’ Defence to Trade Mark Infringement The Court of Appeal has delivered its decision on Roger Maier and Assos of Switzerland SA v. ASOS plc and ASOS.com Limited, the latest in a long-running series of trade mark disputes between Assos, the manufacturer of high-quality cycling clothing and sportswear, and Asos, the online fashion retailer.  The case considers the extent to which an infringer is able to... Read more

17 March 2017 topical Parallel Imports – Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd The term “parallel imports” describes the purchase of trade marked or patented goods in one member state of the European Union (EU) and the subsequent export of those goods to another member state for resale.  Where EU law provides that a trade mark owner’s rights are exhausted after goods bearing the mark are first put on sale with his consent... Read more

14 March 2017 topical Evidence of Co-Existence of Limited Use in Trade Mark Opposition Proceedings The General Court (GC) has handed down a judgment in Case T-285/12 The Cartoon Network, Inc. v OHIM and Boomerang TV, SA.  On 2 October 2013, the GC upheld the Decision of OHIM’s Board of Appeal and allowed an opposition to a CTM application for the plain word mark BOOMERANG on the basis of an earlier figurative registration for BOOMERANG. Read more

14 March 2017 topical Store Design Capable of Trade Mark Registration The decision of the CJEU as to whether a representation of the layout of a retail store, in this instance a flag-ship Apple® store, was capable of registration as a trade mark was delivered in July (Case -421/13 Apple Inc. vs. Deutches Patent and Markenmat (DPMA)).  The mark applied for is below: Read more

14 March 2017 topical Genuine Use of Figurative Marks and Significance of Colour in Infringement Proceedings The Court of Justice of the European Union (CJEU) has recently issued its decision in response to a reference from the English Court of Appeal.  In Case C-252/12, 18 July 2013, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, the CJEU held that a figurative mark is put to genuine... Read more

14 March 2017 topical A Narrowing of the Scope of Protection of Black and White Marks in Europe On 15 April 2014 the European Trade Mark and Design Network (Europeantmdn) published The Common Communication on the Common Practice of the Scope of Protection of Black and White Marks. This publication stems from the Convergence Programme, a joint project between the European Community Trade Marks Office (OHIM) and the National Trade Mark Offices (TMO) of the EU, whose goal is to... Read more

14 March 2017 topical CJEU Rules on the Registrability of Shape Trade Marks The CJEU has delivered its decision on Case C-205/13 Hauck GmbH v Stokke A/S & others regarding the registrability of shapes as trade marks.  The case concerns the grounds for refusal or invalidity of a shape trade mark under Article 3(1)(e) of the Trade Marks Directive (2008/95/EC), which provides that a sign shall not be registered as a trade mark... Read more

14 March 2017 topical Enterprise v Europcar – High Court Rules in Favour of Enterprise in the Battle of the Logos In the first High Court trade mark judgement of 2015, Mr Justice Arnold recently delivered his decision in Enterprise Holdings, Inc v Europcar Group UK and Another [2015] EWHC 17 (Ch).  The well-known car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, with Enterprise claiming that Europcar’s use of its ‘e’ logo... Read more

14 March 2017 topical When Can Shape Trade Marks Be Registered? On 11 June 2015, the Opinion of Advocate General Wathelet was delivered in Case C-215/14, Nestle v Cadbury,   a case concerning the registrability of the shape of the well-known Kit-Kat chocolate bar. Read more

14 March 2017 topical Is Use Alone Enough to Defend a Community Trade Mark from Non-Use Challenge? A Community trade mark is liable to be revoked “if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …” (CTMR Article 51(1)(a)). In The Sofa Workshop... Read more

14 March 2017 topical CJEU Decision on Geographical Extent of CTM Reputation Article 4(3) of Directive 2008/95/EC [and corresponding Article 9(1)(c) of Council Regulation (EC) No 207/2009] deal with rights based on CTMs that have a reputation in the EU.  The wording of Article 9(1)(c) reads: Read more

2 March 2017 introductory Patent Filing: What to Expect During Patent Prosecution After your patent application has been filed at one (or more) of the many Patent Offices around the world, it will be processed by that Patent Office. This is known as the patent “prosecution” process. This Briefing provides an overview of what to expect. However there are many local differences to take into account. The law and practice that govern... Read more

2 March 2017 topical Amendments to the UK Patents Act to Extend the Bolar Exemption for Clinical Trials The UK Patents Act was amended on 1 October 2014 to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug can constitute patent infringement.  This briefing contains a discussion of the amendments and of the situation before the future European Unitary Patent Court (UPC). Read more

1 November 2016 topical UK Extends Copyright Terms for Artistic Works In July, the U.K. repealed a provision that provided a shortened term of copyright protection for ‘‘artistic works.’’ Because this change also revives protection that had expired under the old law but would be revived under the new, rights holders in certain industries such as furniture makers may now have resurrected rights that can be asserted against those copying their... Read more

29 June 2016 topical Fujifilm Kyowa Kirin Biologics v Abbvie Biotechnology Ltd Since April 2014, it has been possible to file multiple divisional applications from any European patent application pending at the European Patent Office (EPO).   Divisional applications can be filed from a European application which is itself a divisional application.  Further, the EPO’s rules on double patenting are relatively liberal1. In some cases, Applicants have used these rules to file multiple... Read more