TRADE MARKS

Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24, 31 January 2012

The Court of Appeal has partially overturned a decision of the High Court, finding that a marketing campaign by Asda, targeted at customers of Specsavers, infringed Specsavers' word and logo marks. In doing so, the Court of Appeal has referred a number of questions to the Court of Justice of the European Union (CJEU). Such questions particularly relate to the validity of wordless marks when used only in conjunction with a separate word mark.

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Wintersteiger AG v Products 4U Sondermaschinenbau GmbH C-523/10, 16 February 2012

The Advocate General has provided his opinion on the interpretation of Article 5(3) of Regulation 44/2001 in the context of trade mark infringement through the use of AdWords, stating: "Where conduct occurs via the internet which is liable to infringe a national trade mark registered in a Member State, Article 5(3) of Regulation 44/2001 must be interpreted as meaning that it attributes jurisdiction to the courts of the Member State in which the trade mark is registered and to the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used."

The Advocate General noted that in order to assess the location where the damage occurs and where the event giving rise to the damage takes place it is necessary (1) to establish that "there are objective elements which enable the identification of conduct which is in itself intended to have an extraterritorial dimension" - these elements include the language used, the accessibility of the information and whether the defendant operates commercially in the jurisdiction where the mark is registered; and (2) to consider the territorial scope of the dissemination of the information - the top-level domain, the location data supplied on the website and location of the information providers business will all be relevant.

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Helena Rubinstein SNC and another v OHIM, Case C-100/11P, Advocate General's Opinion, 16 February 2012

The Advocate General has recommended that appeals brought by Helena Rubinstein and L'Oreal against both General Court and OHIM Board of Appeal decisions to grant the owner of the BOTOX brand a declaration of invalidity against their registered word marks BOTOLIST and BOTOCYL should be rejected. The Advocate General's opinion agrees with the previous findings that the later marks were detrimental to the distinctive character or repute of the earlier mark and took unfair advantage of it. The Advocate General took the view that the General Court had not made any mistakes in assessing the evidence and applying the law. It was significant that the proprietors of the later marks provided no compelling reasons for their choice of the distinctive 'BOTO' prefix.

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Peeters Landbouwmachines BV v OHIM, Case T-33/11, 14 February 2012

Trade mark registration is based on the 'first-to-file' principle; property in a Community Trade Mark is established by registration, not from earlier use. The case reasserts the factors to be considered when judging whether an application for registration is made in bad faith following from Chocoladefabriken Lindt & Sprungli [2009] ECR I-4893.

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COPYRIGHT

Karen Murphy v Media Protection Services Ltd [2012] EWHC 466, 24 February 2012

The High Court has allowed pub landlady, Karen Murphy's appeal against her criminal conviction for screening broadcasts of live UK Premier League football matches which she received via a Greek decoder, to avoid paying higher UK subscription fees, following a ruling handed down by the CJEU in October 2011.

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Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM), Case 360/10, 16 February 2012, 16 February 2012

The CJEU has ruled that an injunction which would require the operator of a social networking site to install an expensive monitoring system to monitor all of its users' use of its site, for an indefinite period, as a preventative measure to curtail copyright infringements, contravened the fundamental right of the social networking site's operator to conduct its business. While the CJEU also recognised copyright holders' fundamental right to property, and the obligation of member states to ensure that rights holders can apply for an injunction against intermediaries whose services are used to infringe copyright, these rights were not inviolable and in this case, because of the severity of the obligations that the injunction sought would have placed on the online intermediary, were outweighed by the defendant's rights.

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Dramatico Entertainment Limited and others v British Sky Broadcasting Limited and others [2012] EWHC 268 (Ch), 20 February 2012

The High Court has held that the acts of the operators and users of BitTorrent P2P site "The Pirate Bay" constitute infringement of copyright in sound recordings. This infringement opens the way for right-holders to obtain an injunction under s97A Copyright, Designs and Patents Act 1988 ("CDPA") against a series of ISPs to block access to The Pirate Bay site.

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Meltwater Holding BV v Newspaper Licensing Agency, CT 114/09, 14 February 2012

The Copyright Tribunal has given its interim decision in the ongoing dispute between the media monitoring service Meltwater and the Newspaper Licensing Agency (NLA) concerning the terms on which online newspaper websites can be used by press cutting agencies and web news aggregators.

The tribunal confirmed that an end-user licence was necessary, but reduced the NLA's proposed licence fee by 90%.

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Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1, 12 January 2012

The Patents County Court has held that where taking a photograph means that decisions are made as to light, angle and features included in the foreground and background, photographs are works reflecting the intellectual creativity of the author.

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Stephen Slater v Per Wimmer [2012] EWPCC 7, 16 February 2012

The Patents County Court has held that a cameraman and a celebrity organising a skydiving stunt are co-owners of the footage of the stunt shot by the cameraman. Judge Birss Q.C. held that it was not necessary to imply a term of co-ownership into the contract (which was silent on IP ownership) but that there was statutory co-ownership under the CDPA. The judge gives guidance on the definition of "producer" for the purposes of the CDPA. The Court held that there was an implied term of co-ownership of foreign copyrights.

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PATENTS

El-Tawil v Comptroller General of Patents [2012] EWHC 185 (Ch), 10 February 2012

The High Court has upheld the decision of the IPO in determining that an application to register a patent for the use of zinc in treating inflammatory bowel disease should be rejected on the grounds of insufficiency, and lack of novelty and inventive step. Further, the Court ruled that the IPO's procedure had been carried out properly and had not disadvantaged the applicant.

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Novartis Pharmaceuticals UK Ltd v Medimmune Ltd and another [2012] EWHC 181 (Pat), 10 February 2012

The High Court has held that an SPC granted for a product protected by a patented process was invalid. In summary: Arnold J provided detailed analysis of the current state of the law in this area and found the law to be uncertain, at least in cases other than those of combined active products. Arnold J held that on the assumption the patent was valid and infringed, the SPC was invalid. The product upon which the SPC was based was not "identified in the wording" of the patent as "the product deriving from the process in question" as required by ECJ case law. Arnold J refused to make a reference to the CJEU, and instead leaves it for the Court of Appeal to consider, once it has decided the appeal on validity and infringement.

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University of Queensland and another v Comptroller General [2012] EWHC 223 (Pat), 14 February 2012

Following the response to questions referred to the ECJ, the High Court has partly allowed an appeal on SPC applications, stating that: (1) Applications for a combination of active ingredients could not be granted because some of the active ingredients were not identified in the relevant patents relied on in support of the marketing authorisation; (2) Applications relating to single active ingredients could be granted, provided that the other requirements are also met, even though the basic patent relied on contains not only that active ingredient but also other active ingredients; (3) It is not possible to obtain an SPC for a product by relying on a process patent unless the claims of the process patent specifically identify the product as deriving from the particular process; and (4) More than one SPC can be granted for applications derived from the same patent, provided they are for different products.

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DATABASE RIGHTS

Football Dataco Ltd & others v YAHOO! UK Ltd & others, CJEU, Case C-604/10, 1 March 2012

 The CJEU has confirmed that copyright protection for football fixture lists as databases is not possible where skill and labour has been expended only in the creation of the lists, rather than in the selection or arrangement of data. The Court had acknowledged in the Fixtures Marketing case in 2004 that football fixture lists were databases, but then ruled out the possibility of protection under the separate database right. This latest effort at using copyright to protect the work involved in compiling fixture lists has probably failed and will inevitably come as disappointing news for sports licensing bodies which are likely now to lose considerable licensing revenues.

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DESIGNS

Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL, Case C-488/10, 16 February 2012

Celaya Emparanza y Galdos Internacional SA (Cegasa) brought an action alleging infringement of a Community-registered design against Proyectos Integrales de Balizamiento SL (PROIN). The claim hinged on whether or not a registered Community design could infringe an earlier registered Community design. The Spanish court referred questions of interpretation of Community design rights legislation to the CJEU for a preliminary ruling.
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CONFIDENTIAL INFORMATION

Coogan v News Group Newspapers Ltd, Mulcaire and others, [2012] EWCA Civ 48, 1 February 2012

The Court of Appeal has dismissed an appeal by a private investigator against orders made by Vos and Mann JJ in two phone-tapping cases, in which they ruled that he could not rely on the privilege against self-incrimination due to the derogation in section 72 of the Senior Courts Act 1981 for "intellectual property" including "technical or commercial information".

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Caterpillar Logistics Services (UK) Ltd v Paula Huesca de Crean, Court of Appeal, 21 February 2012

The Court of Appeal has dismissed an appeal against the High Court's refusal to allow an interim injunction restraining a former employee from (mis)using or disclosing her previous employer's confidential information. Mrs Huesca de Crean (MH) had left her previous employer to take up a new role with a longstanding customer of that employer, and was subsequently accused of putting herself in a position that could adversely affect her former employer. The Court of Appeal also upheld a decision to refuse a 'barring-out order' on MH, based on the contention that MH was (or may be held to have been) a fiduciary of CLS, which would have prohibited her from undertaking any task or having any dealing in respect of her previous and new employers' commercial relationship.

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This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 03/04/2012.