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

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 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 1/15[1], 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 liberal[1].  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,...