Court of Appeal Divided Over Use of 'Own Name' Defence to Trade Mark Infringement

The UK Supreme Court has handed down an important judgment1 which is likely to have global implications for how standard essential patents (SEPs) are licensed in the future. Background A standard essential patent (SEP) is a patent which covers technology which is required (i.e. is essential) to be used in order to implement a technical standard (for example such as 2G, 3G and 4G in the telecommunications industry). Conforming to the technical standard allows devices from different manufacturers to operate together and to use the same infrastructure. Standard Setting Organisations (SSOs) bring participants together to evaluate technologies for inclusion in a new standard....

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 use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim.

The Court of Appeal has given its decision in the appeal against Birss J’s decision in Unwired Planet International Ltd v Huawei Technologies Co Ltd  relating to standard essential patents (SEPs) and how to determine fair, reasonable, and non-discriminatory (FRAND) terms. The Court of Appeal upheld Birss J’s decision (which we reported here) in all respects except one, holding, in summary, that a global licence was FRAND in this case, and that the FRAND requirement does not require the patentee to grant licences on equal terms to all third parties. The Court of Appeal overturned Birss J’s decision that there...

The CJEU has dismissed Nestlé’s appeal on the acquired distinctiveness of the KitKat bar. The Court has re-affirmed the principle that, for an EU trade mark to be registered on the basis of acquired distinctiveness through use, the acquisition of distinctive character needs to be shown in every Member State of the EU in which it did not, ab initio, have such character. It remains to be seen whether the CJEU decision signals the end for Nestlé’s trade mark registration, or is merely one decision in a series of appeals set to continue for some years to come.

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 in context, would think he was intending to claim. Rather, following this new decision, a patent claim in the UK can be infringed by products or processes that are not within the ambit of the language used in the claims.

The planned European Union-wide patent court and related patent right will not launch in December as planned. The Unified Patent Court preparatory committee said June 7 that the delay was caused by several countries failing to agree to the protocol on UPC Provisional Application. The protocol allows parts of the UPC agreement, the controlling document for the court, to come into effect earlier.

Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting organisation (SSO) that it will grant licences on FRAND terms. Until this decision it was not clear exactly what ‘fair, reasonable and non-discriminatory’ meant nor the exact legal standing of the FRAND undertaking and while this decision cannot provide all...

In decision G 1/151, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim.  The Enlarged Board's conclusions prevent so-called "poisonous divisional" attacks, as well as the possibility of "self-collision" with the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications...

To what extent will a Supplementary Protection Certificate (SPC) for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question has been addressed by the EFTA court in Pharmaq v Intervet, and subsequently applied by the Norwegian Court of Appeal. This briefing provides an analysis of the case as well as our conclusions and recommendations for those seeking SPCs for biological products.

We are pleased to report the successful enforcement of our client Action Storage Systems Limited’s UK unregistered Design Rights in their highly successful eXtreme plastic locker.  The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying.  Various defences were raised and although none displaced the fact of infringement of the overall design, they did give rise to some interesting points of law.

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 works.

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 divisional applications with similar claims.  These divisional applications can then be kept pending at the EPO while challenges to the parent patent are determined in EPO opposition proceedings and/or in national litigation.  If the parent patent is revoked, or is found...

In the UK, a successful claimant in a patent infringement action is entitled to claim ‘damages’, that is monetary compensation for damage actually caused by the infringement (but not punitive damages), or an account of the infringer’s profits derived from the infringement.  Damages are more commonly claimed than an account of profits so Design and Display v OOO Abbott provides useful, and rare, guidance from the Court of Appeal on how an account of profits should be assessed.

The High Court of England and Wales was asked for permission to serve proceedings for UK patent infringement on a Chinese manufacturing company.  In considering whether or not to grant permission, the court had to consider the burden of proof when establishing infringement of a process claim.  It also considered whether or not the Chinese company could properly be said to be a joint tortfeasor.

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.

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 infringed Enterprise’s earlier rights in its own ‘e’ logo. Arnold J held that, although the marks were only similar to a low degree, there was a likelihood of confusion, and found in Enterprise’s favour on the grounds of trade...

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 or, if registered, shall be liable to be declared invalid, if it consists exclusively of:

In a previous briefing (Design For “Trunki” Child’s Wheeled Suitcase Successfully Enforced), we reported the successful enforcement of Magmatic’s Community design for the “Trunki” against PMS International’s “Kidee Case”.  PMS were, however, successful in their appeal, leading to the decision at first instance being overturned in the Court of Appeal. The appeal addresses some important questions regarding the interpretation of the registered design and on what level a comparison should be made with an alleged infringement.

Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances.  However, in recent years, these provisions have only rarely, if ever, been used.

In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the technical contribution provided by a patent is assessed.

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 use where a word mark is superimposed over it, provided that the distinctive character of the figurative mark remains intact.  The CJEU has also held that where a figurative mark is registered in black and white, but has been used...

The Court of Justice of the European Union (CJEU) has recently handed down a rare judgment concerning the circumstances in which a trade mark can be found to have become the generic name of a product.  In Case C-409/12 Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 6 March 2014, the CJEU found that it is the perception of the end consumer, rather than intermediaries within the supply chain, which is determinative.  If these consumers recognise a sign as the name of the product, rather than an indication of its trade origin, then the mark has become generic,...

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.

Registered Community designs have been enforced with varying success. However, several steps are available to maximise the scope of the protected design, making it easier to combat infringers. Since becoming available in 2002, registered Community designs have been enforced with varying degrees of success. The body of case law built up since then offers some useful guidance on how to represent a new design in order to make the job of enforcement that much easier. This article considers the lessons that can be taken from those cases to inform a protection and registration strategy for new designs within the European Union....

On Friday 15 March 2019 the World Intellectual Property Organization released its UDRP statistics for the 2018 calendar year. As always the information is useful for brand owners and particularly those interested in knowing more about what their peers are doing in the online brand protection space.

Until 2008, it was not possible to register trade marks in the UK in respect of retailing of any sort. Retailing was considered not a service as such and as simply ancillary to a business providing its own goods and/or services, and thus not protectable. In 2008, the CJEU Praktiker Decision paved the way for acceptance of retailing of goods. In 2014, the CJEU Netto Marken Decision confirmed that retailing of services can also be a commercial activity in its own right and capable of protection. The UKIPO subsequently published guidelines on how to word retailing of services specifications to...

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.

The ongoing struggle of Nestlé to register a three-dimensional trade mark for the shape of its KitKat bar has been dealt a further blow by the opinion of the Advocate General delivered on 19 April 2018.  Advocate General Wathelet’s opinion supports the conclusion of the General Court that Nestlé’s evidence of acquired distinctiveness in 10 of the relevant 15 EU member states was not enough to establish acquired distinctive character in the relevant territory as a whole, though noting that in some cases it may be possible to extrapolate evidence for one country to another.

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 within the EU despite the fact that the designer’s business was located outside the EU.

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”. 

The EUIPO Board of Appeal recently upheld a request for a declaration of invalidity against the following grey/orange colour combination trade mark, on the grounds that its imprecision allows for multiple different combinations of the two colours.

Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect.

The lengthy saga of Nestlé’s attempt to secure a three dimensional trade mark for its Kit Kat shape has taken a further (and perhaps final?) turn, with the decision of the Court of Appeal dated 17 May 2017.

The 9 March 2016 judgment of the Supreme Court concludes the saga between PMS International Group Plc and Magmatic Limited.  Magmatic, who make the “Trunki” suitcase, have exhausted all avenues available for obtaining a decision that the PMS “Kiddee Case” infringes their design rights.

Following several years of discussion on proposed reforms to trade mark law in the EU, a new Trade Mark Regulation comes into force in the EU today, 23 March 2016.  The reforms also impact on the laws of EU Member States, who have three years to implement a new Trade Mark Directive into their national laws. From today, the Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), Community Trade Marks (CTMs) will be known as European Union Trade Marks (EUTMs), and various other changes come into effect.

On 15 December, the European Parliament approved a new package of proposed reforms to trade mark law in the EU, marking an important step towards entry into force of a new Trade Mark Regulation, and the implementation of a new Trade Mark Directive.  The reforms, which were discussed in detail in our briefing of 29 October, constitute some of the most important changes to EU trade mark law since the introduction of the Community Trade Mark system in 1996.

The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications.  These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).   

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:

Earlier this year, and following several years of discussion and consultation, the EU Council published the latest versions of a new package of proposed reforms to trade mark law in the EU.  The reforms encompass a new Trade Mark Directive and Regulation, intended to foster innovation and economic growth in the EU by providing accessible and efficient trade mark registration systems in terms of costs, complexity, speed, predictability and security.  The reforms aim to ensure coexistence and complementarity between the trade mark systems of the EU, to modernise the existing provisions and streamline procedures.  Whilst the wording of the latest...

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 Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), His Honour Judge Hacon held that “genuine use in the Community” will in general require use in more than one Member State and that two CTMs which had been used in the...

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 achieve practice convergence in several areas  where different practices exist across the EU.  OHIM updated its Guidelines to reflect the new practice on 2 June 2014 but other participating Offices, including the UKIPO, have yet to do so.

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:

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.

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 anywhere within the European Economic Area (EEA), the practice of parallel importation is permissible, subject to compliance with certain principles and procedures.

The Court of Justice of the European Union (CJEU) has recently handed down a decision on a reference from the Finnish Courts in Case C-109/12 Laboratoires Lyocentre v Lääkealan turvallisuus– ja kehittämiskeskus (the Centre for Safety and Development in the pharmaceutical sectors), Sosiaali– ja terveysalan lupa– ja valvontavirasto (Social and Health Authorisation and Supervision Authority).

This recent Patents County Court Judgment illustrates two points very well: how the UK unregistered Design Right allows a rightsholder to decide the extent of their rights after the event and the difficulty of proving a clean, independent design process.