European IP Bulletin – Issue 78

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In Depth


Hasbro Inc v 123 Nahrmittel GmbH: Acquired Distinctiveness Versus Descriptiveness

The High Court of England and Wales has held that the strap line THE EDIBLE PLAY DOUGH! used on Nahrmittel’s packaging of its product YUMMY DOUGH infringed Hasbro Inc’s registered trade marks for PLAY-DOH and that Nahrmittel’s actions constituted passing off.

UK Gold Services Ltd v Dave Soho Ltd: Unregistered Rights Opposition Against DAVE

The Opposition Division of the Office of Harmonization for the Internal Market has rejected UK Gold Services’ trade mark application for the word DAVE on the basis of an opposition by Dave Soho Ltd. The opposition was based on the common law rights against passing off.

Formula One Licensing BV v OHIM: Losing Distinctiveness

The General Court of the European Union has held that the combination of “F” and “1” would be perceived as an abbreviation of “Formula 1” and descriptive of racing cars and races. Accordingly, there was no likelihood of confusion between the F1 mark and a later figurative mark for “F1 live”.

Potential Clarification of Counterfeits in Transit

Advocate General (AG) Cruz Villalón of the Court of Justice of the European Union (CJEU) provided his opinion recently on the detention by UK Customs of fake goods that were in transit to a non-EU country. Whilst the AG’s Opinion is not binding, in the majority of cases judges in the CJEU do follow the AG’s Opinion. The AG proposed that in certain circumstances the Customs authorities in the European Union can seize goods that are in transit but further clarification is needed from the CJEU to ensure that the test is not applied differently in individual EU Member States.


Nokia GmbH v IPCom GmbH & Co KG: Pre- and Post-Trial Patent Claim Amendments

The Court of Appeal of England and Wales has ruled in favour of Nokia and rejected IPCom’s appeal against the judgment of Mr Justice Floyd that two of IPCom’s patents relating to cellular mobile technology were invalid and the subsequent refusal by Floyd J to accept pre- and post- trial applications to amend one of them. In so ruling, Lord Justice Jacob reaffirmed the principle that post-trial applications to amend claims of patents following validity attacks are most likely to be refused as this would constitute an additional trial on validity.

Virgin Atlantic Airways Ltd v Delta Airways Inc: “For” Claims Normally Construed as Meaning “Suitable For”

The Court of Appeal of England and Wales has, on an application by Delta for summary judgment, overturned Mr Justice Arnold’s decision to the effect that, based on Arnold J’s interpretation of the main patent claim,Virgin had no real prospect of establishing that Delta had infringed its patent for an aircraft seating system. Lord Justice Jacob disagreed with the judge’s claim interpretation and stated that the claim was not limited to a seating system fitted into an aircraft. Instead, it covered a system capable of being so fitted.

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd: Subsequent Patent Claim Amendment and Res Judicata

The Court of Appeal of England and Wales has refused an application by the Defendant that an order for damages, an injunction, and undertakings following an infringement action in 2009 should be discharged following the European Patent Office’s ruling that the claims upon which the infringement action was founded were invalid.

EU Council Approves Enhanced Cooperation With Respect to a Unitary Patent

On 10 March 2011, the European Council of Competitiveness Ministers authorised enhanced co-operation between 25 EU Member States for the creation of a unitary patent right. Italy and Spain are not participating in the process due to objections relating to the languages under which the proposed unitary patent system would operate.

Questions Relating to the Interpretation of the SPC Regulation Referred to the CJEU.

In connection with Neurim Pharmaceuticals (1991) Ltd v The Comptroller-General of Patents [2011] EWCA Civ 228, the Court of Appeal of England and Wales has referred five questions to the Court of Justice of the European Union (CJEU) on the interpretation of Regulation 1768/92/EC (now 469/2009) which relate to the meaning of the term product, and what inventive developments in the pharmaceutical field are entitled to protection under a Supplementary Protection Certificate (SPC).


Advocate General Considers Territorial Broadcasting Restrictions Incompatible with European Law

On 3 February 2011, Advocate General Kokott delivered her opinion on a preliminary reference to the Court of Justice of the European Union concerning the legality of the use of satellite decoders purchased outside the United Kingdom to show Premier League football matches in public houses in the United Kingdom.


New Rules on Late Payment of Invoices

Tough measures have been implemented with the aim of reducing cash-flow problems responsible for putting one in four EU small and medium sized enterprises out of business. The measures were made EU law on 24 January 2011 with the adoption of the Directive on combating late payment in commercial transactions (2011/7/EU). This replaces the current Late Payments Directive (2000/35/EC).

European Contract Law: United Kingdom and the European Union on Collision Course

On 1 July 2010, the European Commission published its Green Paper on European contract law setting out possible practical and legislative actions designed to bring more coherence to contract law across the European Union. In the United Kingdom, the Ministry of Justice (MoJ) issued a call for evidence on the Commission’s proposals. The call for evidence closed on 26 November 2010 and responses were published on 10 February 2011. The response of the MoJ amounts to an almost wholesale dismissal of the Commission’s proposals

Proposed Consumer Rights Directive: Conflicting Texts Adopted

On 24 January 2011, the EU Council of Ministers adopted a common approach to the Consumer Rights Directive. The final version of the Directive remains in the balance, however, as the Council’s approach conflicts with a text adopted on 1 February by the European Parliament’s Committee on the Internal Market and Consumer Protection.

James Robinson v P E Jones (Contractors) Ltd: Concurrent Contractual Liability and Tortious Liability

The Court of Appeal of England and Wales has held that in respect of construction contracts, it should now be regarded as settled law that a builder or vendor of a building does not, by reason of his contract to construct or complete a building, automatically assume any liability in the tort of negligence in relation to economic loss arising from defects in the building.

McCain Foods GB Ltd v Eco-Tec (Europe) Ltd: Direct Loss and Consequential Loss

Judgment was given in favour of McCain Foods on a claim for breach of contract against the supplier of a biogas treatment system. The court held that the supplier could not rely on a clause in the contract excluding liability for indirect and consequential losses and awarded McCain all losses claimed as “arising naturally according to the ordinary course of things from the breach of contract itself”.


FIFA and UEFA v Commission: UK’s Designation of the World Cup and European Championships as Listed Events Held Compatible with EU Law

The General Court of the European Union considers that the United Kingdom’s designation of the football World Cup and European Championships as events of major importance to society, meaning they have to be available on free-to-air television, is compatible with European Law.