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Golden Balls and Ballon D’Or – a likelihood of confusion?
The EU General Court has annulled a decision of the OHIM Appeal Board and has ruled that the marks BALLON D’OR and GOLDEN BALLS are not so similar that they were likely to confuse customers.
Golden Balls Ltd v OHIM, Cases T-437/11 and T-448/11, 16 September 2013.
Mr and Mrs Bodur are now free to register GOLDEN BALLS as a CTM. The case illustrates the approach the Court is likely to take when considering an opposition concerning two similar marks (that is, similar in that one requires translation to be similar).
Mr and Mrs Bodur, a husband and wife business team, ran their own successful business selling clothing out of a shop in Hampstead under the GOLDEN BALLS brand. The mark was registered in the UK in 2001. In 2007, the couple licensed the brand to a game show and applied to register the mark GOLDEN BALLS as a Community Trade Mark (“CTM”).
Intra Presse (a large media company and organiser of the Footballer of the Year Award) commenced legal proceedings against the couple opposing the application, saying that GOLDEN BALLS was too similar to Intra Presse’s own CTM BALLON D’OR. The goods for both signs were identical or similar. When translated from French to English, BALLON D’OR means golden ball.
Initially, the opposition was rejected by OHIM but Intra Presse successfully appealed. The legal action caused financial hardship for the Hampstead couple and the case was appealed to the EU General Court on a pro bono basis.
The EU General Court reversed the decision of the Appeals Board, allowing the couple to register their brand as a CTM. The Court ruled there was only weak conceptual similarity between the two marks and said that the marks were unlikely to confuse customers.
The Court noted the following:
The Court held that the Appeals Board was wrong to find the existence of a likelihood of confusion for certain goods and services (with the exception of specified services in class 9 for which the opposition was upheld).
Court of Appeal restates doctrine of privity of interest when considering whether a party is barred by estoppel from bringing patent revocation proceedings
Recently, the Court of Appeal considered the test to be applied when assessing whether there is privity of interest between a party to pending patent revocation proceedings and a third party (previously of the same group of companies) involved in earlier revocation proceedings concerning the same patent. The Court of Appeal, confirming and applying the test to the facts, upheld the High Court’s ruling that there was no privity of interest and that accordingly the new party, Resolution Chemicals Ltd, was not barred by estoppel from bringing proceedings for revocation of Lundbeck’s patent.
Resolution Chemicals Ltd v H. Lundbeck A/S  EWCA Civ 924, 29 July 2013.
The Court of Appeal’s ruling in Resolution Chemicals Ltd v H Lundbeck A/S helpfully restates the test for assessing whether there is privity of interest between a new party and a party to earlier proceedings. Lundbeck’s action to have Resolution’s challenge thrown out has proved unsuccessful and a trial will now take place challenging the validity of Lundbeck’s patent. Had Lundbeck’s action succeeded at this early stage, Resolution would have been estopped from bringing patent revocation proceedings.
Lundbeck A/S (“Lundbeck”) was the proprietor of a European patent (now expired, but the subject of a supplementary protection certificate extending protection (“SPC”) until 2014) for the medicinal product escitalopram, used to treat depression. In 2005 a number of companies brought proceedings to challenge the validity of the UK counterpart of Lundbeck’s patent. The proceedings were not successful. One of the companies was Arrow Generics Ltd (“Arrow”). At the time of the validity proceedings, Resolution Chemicals Ltd (“Resolution”) was part of the same group of companies as Arrow.
Resolution became an independent company in 2009 and subsequently launched proceedings to attempt to revoke Lundbeck’s patent (and therefore the SPC). Lundbeck argued that Resolution could not bring proceedings because it had privity of interest with Arrow and as such, Resolution was precluded from bringing the claim by reason of estoppel or abuse of process. Privity of interest provides an exception to the general principle of the law of estoppel in that the estoppel binds only the parties to the previous
The High Court judge ruled that Resolution was not precluded from bringing the action against Lundbeck because:
“…Resolution had no interest in escitalopram at the time of the previous proceedings…I conclude that there was no privity of interest between Resolution and Arrow Generics [Ltd] with regard to those proceedings…”.
Lundbeck appealed. The issue before the Court of Appeal was whether there was privity of interest between Arrow and Resolution at the time of the earlier proceedings.
The Court of Appeal held that, on the facts, there was no privity of interest between Resolution and Arrow and that Resolution was not estopped from bringing patent revocation proceedings against Lundbeck.
Floyd LJ stated that the Court needed to consider the following when considering whether there was privity of interest:
The judge said that the High Court judge had applied those principles to the present case correctly; there was no error of law. Although Arrow and Resolution were part of the same group of companies under common control, there was no subsisting relationship between them such that the proceedings were being conducted by Arrow for Resolution’s benefit. Arrow applied to revoke Lundbeck’s patent because it had an interest in it being revoked.
At the time, Resolution was not in a position to manufacture a generic version of the product, its previous efforts to do so had failed and ceased prior to the onset of the earlier proceedings. There was nothing to suggest that Resolution had stood back and allowed Arrow to fight its battle as was alleged by Lundbeck. Since Resolution’s interest was no different to that of any other company, the facts were not sufficient to find Resolution bound by the outcome of the earlier proceedings.
Court of Appeal rules that evidence which post-dates a patent’s priority date may be used to challenge patent validity
In a recent case concerning patent revocation and infringement, the Court of Appeal ruled that evidence which is dated after the priority date of a patent may be used to challenge the validity of a patent.
Generics (UK) Ltd (trading as Mylan) v Yeda Research and Development Co Ltd and another  EWCA Civ 925, 29 July 2013
The analysis of whether the invention made a technical contribution involved a review of clinical trials data in this case. In fact, the judge correctly analysed the evidence as to whether the data supported the plausibility of the technical contribution and, on the facts, found that Mylan did not prove that the technical advance claimed did not exist. Therefore, although the judge had wrongly decided that post dated evidence could not be relied upon, the correct conclusion as to the effect of the evidence was reached.
Yeda Research and Development Co Ltd (“Yeda”) is the proprietor of a patented copolymer-1, used in the treatment of multiple sclerosis. Generics UK Ltd, trading as Mylan (“Mylan”) brought proceedings for revocation of Yeda’s patent, challenging the validity of the patent for obviousness over a prior publication and for lack of a technical contribution. Mylan also sought a declaration of non-infringement in order that Mylan could launch its own proposed generic product.
The High Court ruled that Yeda’s patent was valid and that it was infringed by Mylan’s proposed generic product. Mylan appealed.
The Court of Appeal rejected Mylan’s appeal and found that the patent was valid. In addition, the Court ruled that Mylan had not established non-infringement of the patent. Accordingly, the revocation action was dismissed and the declaration of non-infringement was refused.
There were a number of matters at issue before the Court of Appeal, one of which arose as a result of Mylan’s contention that it should be able to rely upon evidence dated after the priority date of the patent to show that a technical effect was not provided by the claimed products and therefore the patent lacked an inventive step and was invalid. (A patent is justified by its technical contribution and if an invention is found to have no plausible technical contribution, a patent is invalid.) Mylan’s contention was rejected by
the High Court judge, Arnold J, who ruled that such later evidence was not admissible when considering lack of technical effect.
The Court of Appeal, although upholding Arnold J’s ruling on validity and infringement, disagreed with Arnold J’s decision concerning post-dated evidence. The Court of Appeal ruled that the judge had been wrong to hold that if the patent specification made a technical effect plausible, it was not open to Mylan to challenge the existence of that effect by the use of later evidence.
The “problem and solution” approach adopted by the European Patent Office to the ground of lack of inventive step required the court to judge inventiveness by reference to what it was that the invention brought with it – its technical effect or advance (AgrEvo (T939/92) and Conor v Angiotech  UKHL 49 considered).
In doing so, the Court was not judging the obviousness of the claimed invention by reference to later evidence; it was simply defining by evidence what it was that the invention was or brought with it. The Court of Appeal therefore held that post-dated evidence is admissible for determining whether the technical effect made plausible by the patent is a contribution for the purposes of determining obviousness.
The High Court has upheld a decision of the UK Intellectual Property Office that a claim at issue in this recent patent application for software that moves data between computers using email was novel and inventive but not patentable.
Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks  EWHC 2673 (Pat)
The judgment makes the following very clear: whether an invention is novel and inventive does not determine whether an invention satisfies the requirements for patentability. Being novel and inventive is not what takes a contribution outside the excluded area nor is it what makes an effect or contribution technical and therefore potentially patentable.
The case concerned an appeal from the Comptroller in relation to a patent application submitted by Lantana Ltd. The patent application was entitled “Methods, Systems and Computer program products for retrieving a file or machine readable data”, essentially for software that moved data between computers using email. The Comptroller refused the application because he considered that it was excluded from patentability under section 1(2) of the Patents Act 1977 as relating to “a computer program...as such”.
The case before the court concerned claim 1 of the patent, helpfully summarised by the judge as follows (in paragraph 8 of the judgment):
“The claim envisages two computers connected via the internet. The user of the local computer wants to retrieve data from the remote computer. When required, the local computer creates an email message containing machine-readable retrieval criteria and sends it to the remote computer. The remote computer receives the email, works out if the email contains any machine readable instruction and, if so, executes that instruction, retrieves the data and sends back an e-mail containing the requested data.”
Lantana appealed the Comptroller’s decision.
The High Court upheld the Comptroller’s decision.
The judge, Mr Justice Birss, applied the four step test adopted in the Aerotel case to the patent application claim:
Although Lantana argued that the invention provided four technical effects, with a contribution technical in nature and not excluded from patentability, the judge addressed all four of the effects relied upon and found nothing which amounted to a technical contribution arising from the claim.
Looking at the claim overall, the judge said:
“In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, ie email.
"The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character.”
Accordingly, any contribution was held not to have a relevant technical effect and the appeal failed.
High Court considers whether an implied licence to use software should continue after the extension of an initial term of a services agreement
The High Court recently considered whether an implied licence to use software for the purposes of providing services under a managed services agreement should continue after the initial term of the agreement. The Court ruled that since the term of the agreement was extended for an initial period of six months in accordance with the change control procedures set out in the agreement, the implied licence should continue for the duration of the extension.
However, when the agreement was further extended, but not in accordance with the provisions of the agreement, no further licence to use the
software could be implied for the further extension. The case highlights the importance of complying with the provisions and procedures set out in a contract when agreeing any change.
Noemalife SPA v Infinitt UK Ltd  EWHC 2376 (TCC), 14 August 2013.
This case illustrates the importance of complying with the procedures set down in an agreement when any change to terms is agreed. In this case, a failure to do so has meant that FUK has continued to provide services when it was under no obligation to do so; and FUK has infringed the rights of the copyright owner by continuing to use software without the benefit of a licence to do so.
Ferrania UK Ltd (“FUK”) (a company later acquired by the defendant Infinitt UK Ltd) was granted a licence by its sister company in 2003 to use certain software (known as “RIS”), for the purposes of providing services to Newcastle upon Tyne NHS Trust (the “NHS Trust”) under a managed services agreement.
The term of the agreement was a period of seven years but the agreement contained provisions by which the agreement could be extended for further six month block periods up to a maximum extension period of thirty six months. The provisional agreement provided that any amendment to the agreement, including to the agreement term, had to be made in accordance with the change control procedures set out in the agreement itself.
The initial term of the services agreement expired on 30 September 2010 and was extended for six months to 31 March 2011 by a contract change control note. In December 2010 the agreement was extended again, this time for 30 months (expressed as five blocks of six months) to 30 September 2013 all in one change control note.
The claimant Noemalife SpA (“Noemalife”) had acquired the copyright in the software from FUK’s sister company and argued that, at the expiry of the initial period in September 2010, a fresh implied licence came into effect on 1 October 2010, and that it was a term of that licence that the defendant would pay a reasonable fee for use of RIS.
The issue before the Court was whether the licence granted to FUK in 2003 to use RIS for the purposes of providing services to the NHS Trust continued after the expiry of the initial seven year term, and if so, for what period.
(Two further issues arose at the beginning of the trial: whether Noemalife had any proprietary right in RIS and whether Noemalife should be permitted to add an alternative claim for infringement of copyright.)
The judge ruled that the original implied licence granted by FUK in 2003 was extended by six months to 31 March 2011.
Noemalife had no contractual right to recover any sum from FUK in relation to the use of RIS for the purposes of providing services under the agreement to the NHS Trust beyond 30 September 2010.
Court of Appeal dismisses appeal in Formula One confidentiality and copyright infringement case
The Court of Appeal has dismissed an appeal from a ruling of the High Court that the Lotus Formula One racing team had infringed the copyright and misused the confidential information of Force India, a rival team. The Court also ruled that the basis on which the trial judge assessed quantum of damages was correct. The Court agreed that compensation should be assessed by reference to the benefit the defendant derived from its misuse of the confidential information (in this case by using the information as a “short-cut” to design a car for a new customer instead of starting a design from “scratch”).
Force India Formula One Team Ltd v Aerolab SRL and another  EWCA Civ 780, 3 July 2013.
The Court of Appeal has provided helpful guidance on assessment of damages in this breach of confidence case - compensation should be assessed by reference to the benefit the defendant derives from its misuse of the confidential information.
The case also illustrates the importance of carefully drafted pleadings. Had Force India pleaded a case for damages for breach of the agreement’s exclusivity clause, it seems likely that this would have had an impact on the level of damages awarded. Also, the lack of evidence that Aerolab’s employees regarded the confidential CAD files as theirs to use as they wished, meant that compensation could not have been awarded on the basis of the value to Aerolab of the whole corpus of information obtained from Force India.
Force India Formula One Team Ltd (“Force India”) entered into a development agreement with Aerolab SRL and another (together “Aerolab”), a company specialising in aerodynamic design. Under the terms of the agreement, Aerolab agreed to develop a Formula 1 racing car. The agreement contained a confidentiality provision.
Confidential information, which was defined broadly, had to be used exclusively for work carried out under the agreement but the obligation of confidence was expressed not to apply to certain classes of information, including inter alia information which was in the public domain other than by breach of the confidentiality clause and information developed in good faith by employees of Aerolab who did not have access to Force India’s confidential information. The agreement also contained an exclusivity clause, preventing Aerolab from carrying out the same design service for other clients.
When Force India failed to pay fees due under the contract, the agreement was terminated for repudiatory breach. Aerolab and the other defendants then started working for the Lotus Formula One team and Force India alleged that Aerolab used Force India’s pre-existing CAD files as a basis for creating a rival design for Lotus. Force India brought a claim for contractual breach of confidence and copyright infringement.
The High Court found that Aerolab had misused Force India’s confidential information and infringed Force India’s copyright but assessed damages on the basis of a notional licence fee, awarding Force India a modest sum of €25,000.
Force India appealed the quantum ruling based only on the confidentiality claim, claiming damages for misuse of all of its confidential designs, claiming that Aerolab’s employees had "treated them as their own" when producing designs for Lotus.
The Court of Appeal dismissed Force India’s appeal, upholding the breach of confidence ruling and the High Court’s assessment of damages.
Final injunction granted in generic drug dispute
Merck Sharp & Dohme Corp and another v Teva Pharma BV and another,  EWHC 1958 (Pat), 9 July 2013 (Birss J)
The High Court has granted a final injunction preventing Teva, a generic drug manufacturer, from supplying a generic drug which would infringe a drug patent protected by a Supplementary Protection Certificate (“SPC”), until November 2013.
In February 2012 an interim injunction was granted to the claimants (Bristol Myers Squibb and Merck) preventing Teva from launching its generic drug prior to expiry of the claimants’ patent. (Click here for earlier report.)
The question at trial was whether there was a sufficiently strong probability that an injunction would be required to prevent Teva from infringing, taking into account the circumstances at the date the proceedings were issued.
The Court found that there was a risk that Teva could launch its generic drug before the expiry of the claimants’ patent protection. The claimants had raised the matter in correspondence with Teva, action that was appropriate and reasonable in the circumstances. The Court found that Teva's intentions were clear - Teva wanted to keep open the possibility of launching in the UK before the expiry of the SPC.
Although Teva argued that it had no intention to infringe the claimants’ patent (Teva did not challenge validity of the patent but agreed that the patent would be infringed by sales prior to November 2013), on the evidence Teva was actively considering launching its drug. Such a launch was an act of patent infringement, was unlawful, would interfere with the claimant's legal rights and would inflict damage on the patentee. The Court ruled that a final injunction was sufficiently justified.
The ruling prevents Teva launching its generic drug until after expiry of the SPC in November 2013.
IPO, Practice amendment notice (03/13), 5 August 2013.
Following the CJEU’s ruling in Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10 (the IP Translator case), the Intellectual Property Office (IPO) has issued a further practice amendment notice (PAN) on trade mark specifications and class headings. The PAN came into effect for applications on or after 5 August 2013.
The Court confirmed in the IP Translator case that the use of general indications in lists of goods/services in applications for marks were too vague to meet the CJEU’s requirements for clarity and precision. Accordingly, the PAN sets out at paragraph 13 a list of 11 general indications considered to fall into the category lacking clarity and certainty; use of these terms in an application will result in an objection being raised during examination.
Applicants may provide replacement descriptions of goods and services where one of the unacceptable general indications has been used, provided the replacement terms clearly fall within the meaning of the offending general indications.
Finally, the trade mark application form will be amended to provide that applicants confirm that the terms used in their list of goods or services should be given their ordinary and natural meanings. If an applicant wishes to register a mark for all the goods or services set out in the alphabetical list for a class(es) of the Nice classification system, they should list all the individual terms in the alphabetical list for the class(es) concerned. Therefore, wording such as "all goods in Class X" will give rise to an objection.
IPO announcement, 31 July 2013.
The Intellectual Property Office (IPO) has published a third set of draft provisions providing for new copyright exceptions.
The third set of exceptions permit the making of accessible copies of copyright works by people who have disabilities that impede access to those works, provided that such copies are made strictly for the individuals’ personal use. Copies may also be made by educational establishments and non-profit organisations for use by people with disabilities.
Copyright and Duration of Rights in Performances Regulations 2013 (SI 2013/1782), 17 July 2013.
The new Copyright and Duration of Rights in Performances Regulations 2013 will come into force on 1 November 2013. The Regulations amend the Copyright, Designs and Patents Act 1988, implementing the provisions of the directive extending the term of copyright protection for performers and sound recordings from 50 to 70 years; harmonising the copyright term for co-written works; and providing for record companies to pay 20% of the revenues they earn during the extended period into a fund for session musicians.
Trade Marks (Fast Track Opposition) (Amendment) Rules 2013, Trade Marks (Fees) (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment No. 2) Order 2013
From 1 October 2013, a new fast track trade mark opposition procedure will be available in the UK. The new procedure will allow the IPO to deal with straightforward opposition cases quickly and at appropriate cost.
A consultation revealed the current opposition procedure to be too time consuming and expensive.
The new cheaper and faster opposition procedure will be limited to oppositions brought solely on grounds under section 5(1) or 5(2) of the Act (that the opponent owns an earlier trade mark application or registration protecting a trade mark that is either identical or similar to the applied for mark and, except in cases of double identity, there exists a likelihood of confusion between the marks).
The fast track procedure, subject to a fee of £100, will not be available in cases where the opponent seeks to rely upon alternative grounds.
For more information please contact Ian Wood, Partner
T: +44 (0)20 7203 5124