European IP Bulletin – Issue 72

Overview


In Depth

PATENTS

UK Patent Office Decision: Ignorance Not a Valid Defence in “Unintentional” Failure to File

The UK Patent Office has refused to restore the right to claim priority from an earlier British patent in the case of an application for a patent under the Patent Cooperation Treaty, even though an entitlement action relating to the earlier patent was only resolved in the Applicant’s favour after the deadline for claiming priority had expired.

Nampak Cartons Ltd v Rapid Action Packaging Ltd: “Pozzoli” Test and a Measure of Flexibility

In Nampak Cartons Ltd v Rapid Action Packaging Ltd [2010] EWHC 1458 (Pat), Mr Justice Floyd concluded that the attack on inventiveness by Nampak Cartons Ltd could only be sustained with the benefit of hindsight and that a failure to adhere rigidly to the “Pozzoli” test was not necessarily an error of principle by the hearing officer.

UK Intellectual Property Office Practice Notice on Second Medical Use Claims: « Swiss-type » Claims Objectionable

On 26 May 2010, the UK Intellectual Property Office issued a Practice Notice on second medical use claims, stating that it will no longer accept « Swiss-type » claims for pharmaceutical products, following the recent decision of the European Patent Office’s Enlarged Board of Appeal in G 02/08 Abbott Respiratory/Dosage regime.

DESIGNS

Victor Ifejika v Charles Ifejika: Equitable Assignment of Design

The Court of Appeal of England and Wales has held that an assignment of a registered design does not have to be in writing and can be effected by equitable assignment or by operation of law.

Crocs Inc v Holey Soles Holdings Ltd: Individual Character and Novelty

A registered design was found to be invalid as the design had been disclosed at a trade exhibition and online and had been sold through a US registration prior to the grace period afforded to the design.

TRADE MARKS

UK Intellectual Property Office Practice Amendment Notice Applying the ECJ Ruling in American Clothing

The UK Intellectual Property Office has issued a Practice Amendment Notice (PAN 01/10) on trade mark applications for protected symbols, setting out how it will assess applications to register marks that incorporate or resemble national symbols, protected under Article 6terof the Paris Convention. The practice has been updated in light of the decision of the European Court of Justice in Joined Cases C-202/09 and C-208/08 American Clothing NV v The Office of Harmonization for the Internal Market.

PASSING OFF

Numatic International Ltd v Qualtex UK Ltd: Pyrrhic Victory for HENRY?

The High Court of England and Wales has held that the threat by Numatic to market and sell a vacuum cleaner in the shape of a tub, with a domed black lid, amounted to passing off in the sense that the consumer would be deceived into thinking that the product was one of the well known HENRY vacuum cleaners.

COMMERCIAL

Financial Services Authority Statement: Consumer Declarations and The Unfair Terms in Consumer Contracts Regulations 1999

In a June 2010 statement, the Financial Services Authority has warned financial services firms to review and amend their retail terms and conditions, stating that terms to the effect that the customer has « read and understood this contract » are unfair under the Unfair Terms in Consumer Contracts Regulations 1999. Firms must provide a clear warning to consumers that they should read and understand terms before signing them and that they should ask questions if they do not understand any terms.

Dominion Corporate Trustees Ltd v Debenhams Properties Ltd: Termination, Time of the Essence and Repudiatory Breach

A recent decision of the High Court of England and Wales has held that the late payment of a reverse premium by Dominion (as landlord) to Debenhams (the UK retailer, as tenant) did not constitute a repudiatory breach and so did not entitle Debenhams to terminate.

City of Westminster v Urban Wimax Ltd: Clarification of « On Completion of This Agreement »

On appeal, it has been found that the phrase “oncompletion of this agreement”, when interpreted in its context, reading the document as a whole and having regard to the expressly stated objectives, could not mean “on execution or signing”, but instead on the completion of what is envisaged to be done by the agreement.

E-COMMERCE, IT & BANKING TECHNOLOGY

Financial Services Authority Update: Financial Promotions and Non-Promotional Communications on New Media

In June 2010, the Financial Services Authority (FSA) published an update on financial promotions using new media, following its review of the use of new media channels, such as Twitter and Fecebook by those in the financial services sector. In its review, the FSA looked at approximately 30 new media pages of small and larger firms that offered a wide range of products such as financial advice and investments. The FSA also visited a variety of forums to gain an insight into the posts and comments being made on the subject.

SPORT

Future Investments SA v Fédération Internationale De Football Association (FIFA): Licensing of World Cup Rights, Jurisdiction and Causing Harm by Unlawful Means

The claim that Future Investments sought to bring in England concerned the scope of FIFA’s rights to licence footage of the 1998 World Cup to IMG. Future alleged and FIFA denied, that Future had exclusive rights which FIFA and IMG had infringed, since IMG should have obtained a license from Future to use the footage. Future claimed against FIFA under the tort of causing damage by unlawful means.