Bringing you monthly news of key developments in intellectual property law
PATENTS
Bayer Schering Pharma AG, T 1063/06 - 3.3.10, 3 February 2009
The EPO Board of Appeal (BoA) rejected claims to functionally defined chemical compounds, which were to be identified via a new research tool using a screening method described in the patent. The claims were rejected on the basis that they were broader than the applicant's invention, and also that the claims were insufficient because the skilled person would have to carry out a research programme to establish whether or not any particular compound fell within the claims. The translation of the decision was not published until March 2010, but the original decision was given in February 2009.
To see the full text of the decision, click here.
Case G3/08, Enlarged Board of Appeal, 12 May 2010
The referral by the EPO president was held to be inadmissible by the Enlarged Board of Appeal. The eagerly awaited response by the EPO's Enlarged Board of Appeal to the EPO president's referral of questions concerning the patentability of software, case G 3/08, has been issued. The Enlarged Board ruled on 12th May 2010 that the referral by the president is inadmissible.
While the EPO says on its website that the ruling by the Enlarged Board confirms the current practice by the EPO in this area, observers seeking ground-breaking law on the boundaries of patentability of computer-implemented inventions (CII) may be disappointed. Some may feel that, by finding the referral by EPO president, Alison Brimelow, to be inadmissible, the Enlarged Board has thrown away a valuable opportunity to bring pan-European harmonisation to a difficult legal area. The Enlarged Board has instead used the opportunity to confirm various aspects of specified CII decisions.
To see the full text of the decision, click here.
TRADEMARKS
L'Oréal & Ors v Bellure & Ors, 21 May 2010, Court of Appeal
The Court of Appeal has handed down its much awaited judgment following the decision of the ECJ in the case of L'Oréal v Bellure. It will be welcomed by leading brand owners as providing greater protection against free-riding and may lead to a raft of new cases based on such claims.
To see our full Law-Now on this important decision, click here.
OHIM v Borco-Marken-Import Matthiesen GmbH & Co, Advocate General Opinion
The Advocate General has advised the ECJ to dismiss an appeal against the General Court's decision that OHIM erred in not assessing the distinctive character of a trademark which consists of a single letter, in relation to the goods and services specified in the application.
To see the full opinion, click here.
COPYRIGHT
Sociedad General de Autores y Editores (SGAE) v Padawan S.L., Case C-467/08 11 May 2010
The Advocate General of the ECJ has provided an opinion that a provision of Spanish law that imposes a levy on all sales of digital reproduction equipment and media may not be compatible with the Copyright Directive (2001/29 EC). The Copyright Directive permits Member States to allow private copying of copyright works as long as there is 'fair compensation' for rights holders. A levy on reproduction media and equipment provided by Spanish law would only be compatible with the Copyright Directive where it can be presumed that the equipment, devices and media are to be used to make private copies of works – this requirement would not be met by indiscriminately charging a levy to persons including those who clearly purchase the digital reproduction devices and media for purposes other than private copying.
To see the full opinion, click here.
DESIGNS
Crocs Inc. v Holey Soles Holdings Ltd., 26 March 2010, OHIM Board of Appeal
The OHIM Board of Appeal has upheld a finding of the invalidity division that the Community Design registration for the famous Crocs sandal was invalid for lack of individual character. Reversing the decision of the invalidity division, the Board of Appeal also found that the design lacked novelty. The Board of Appeal considered that disclosures of the design in the USA by way of commercial sales and display at exhibitions, and also disclosures in Crocs' website, constituted novelty-destroying disclosures. It also held that the addition of a reversible strap was not enough to give the Crocs clog individual character over an earlier design without the strap, and that, in any event, the strap was a feature of the appearance of the product which was solely dictated by its technical function.
To see the full text of the decision, click here.
Beifa Group Co. Ltd v OHIM, General Court, 12 May 2010
The General Court has upheld an appeal against a decision of the OHIM Board of Appeal that a Community Registered Design was invalid. In so doing the General Court has given guidance on the application of Article 25(1)(e) of the Community Designs Regulation, which provides that a Community design may be declared invalid if it includes an earlier distinctive sign.
To see the full text of the decision, click here.
Victor Ifejika v Charles Ifejika and another [2010] EWHC Civ 562, 25 May 2010
The Court of Appeal in an unanimous judgment has allowed the claimant's appeal from an order for summary judgment made in the defendants' favour in relation to proceedings for infringement of a registered design in a contact-lens cleaning device. The claimant sought to rely on a written assignment from CCL Vision Limited (CCL), in whose name the design was originally registered. CCL was a joint venture company owned by the claimant and the first defendant. The High Court had found that the absence of a prior legal assignment of the design from its original owner to CCL was fatal as it meant that section 1(2) of the Registered Designs Act 1949 (RDA) had not been followed and, consequently, the registered design was invalid. However, the Court of Appeal held that it was at least seriously arguable that there had been an equitable assignment of the design rights to CCL, in which case the company would have satisfied the definition of proprietor in section 2(2) and would have been entitled to apply for registration under section 1(2) of the RDA.
To see the full text of the decision, click here.
CAUSING HARM BY UNLAWFUL MEANS
Future Investments SA v Federation Internationale de Football Association (FIFA)[2010] EWHC 1019 (Ch), 11 May 2010
The High Court has rejected an application by Future to amend
its claim in relation to the tort of causing harm by unlawful
means, in a dispute concerning the home-video rights to the 1998
football World Cup.
Future claimed to be entitled to exclusive rights to the production
and exploitation of the international television signal and all
other copyright works in the 1998 football World Cup matches and
opening and closing ceremonies, particularly the exclusive rights
to produce and exploit home video of the 1998 World Cup. FIFA
is the world governing body of Association Football and arranged
the World Cup every four years.
To see the full text of the decision, click here.
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 25/06/2010.
