UK: IP Snapshot: December 2006

Bringing you monthly news of key developments in intellectual property law.

O2 Holdings Ltd & another v Hutchison 3G Ltd (Court of Appeal)

In this long-running dispute between two mobile phone service providers, the Court of Appeal has referred two questions to the European Court of Justice on the interaction between trade mark infringement and the Comparative Advertising Directive (97/55/EC).

First, the Court asked whether the use of a mark for the purposes of a comparison which does not affect the essential function of the trade mark (to guarantee trade origin) is prevented by Article 5(1) of the Trade Marks Directive. Second, the ECJ was asked to consider whether or not the use of the trade mark for the purposes of comparative advertising must be either "necessary" or "indispensable" to such advertising. As an aside to these questions, Jacob L.J. noted that in his view, there is simply no reasonable need for trade mark law to cover this type of use, when there are independent mechanisms under the CAD for dealing with it. It remains to be seen how the ECJ will consider this issue.

For the full judgment in this case, click here

In a further comparative advertising case involving various alcoholic beverages and their methods of production, the Advocate General of the European Court of Justice has given a detailed opinion on the various types of competitor advertising which would be deemed to fall under the Comparative Advertising Directive. A comparative advertisement which does not mention competitors by name may or may not be "comparative advertising" under the Comparative Advertising Directive, depending on whether specific competitors would be called to mind by the audience.

For the full text of the Advocate General’s Opinion, click here

In a case involving the transit of infringing clothing through the EEA, The ECJ has confirmed that trade mark owners cannot prevent the transport of goods bearing their trade marks through a Member State where the goods are merely in transit under Customs procedures and not actually placed on the market in the State of transit.

For the full judgment in this case, click here

The CFI has rejected an appeal against a finding of a likelihood of confusion on an opposition between two component marks incorporating the word "brothers" for identical goods. The Court considered that the dominant component in each mark was similar, which would negate other differences in visual and aural similarity. Although the later mark included additional matter which would indicate the origin of the goods, this would be perceived as subsidiary to the primary message and would not be sufficient to prevent an association between the two marks.

For the full judgment in this case, click here

The High Court considered the interpretation of Article 17(2) of the Community Trade Mark Regulation in this decision involving the transfer of a Community Trade Mark under a business sale agreement. Article 17(2) provides that the transfer of the whole of an undertaking shall include the transfer of the CTM unless there is agreement to the contrary or the circumstances clearly dictate otherwise.

In this factually complex case, the High Court considered the ownership of the title to copyright in various Cuban songs. It serves as a useful reminder that title issues in copyright depend upon the law in force at the time of creation of the copyright work (See Schedule 1 of the CDPA 1988). The 1988 Act preserves certain previous provisions of the Copyright Act 1956, which in turn preserved parts of the Copyright Act 1911.

This case concerned a provision in the 1911 Act which prevented first owners of copyright from assigning their works for more than 25 years beyond their death (other than by will) and which created a reversionary interest of the remaining term of the copyright back in favour of the creator’s estate. This provision still applies to assignments of copyright that were made prior to the coming into force of the 1956 Act on 1 June 1957.

The Patents Court held that Allergan Inc’s patent was invalid on grounds of added matter, novelty and obviousness. Key to the decision was Kitchin J’s construction of the claims in the patent in suit as encompassing not only the active neurotoxic component in isolation, but also as part of the larger Botulinum toxin compound.

To read the full text of the judgment, click here

The Patents Court refused to stay UK revocation proceedings pending the outcome of opposition proceedings in the European Patent Office. The ability of the parties to pay costs, the benefits of providing an element of legal certainty in the UK, and the amount of time it would take for the EPO to finally rule on the patent were all key factors.

To read the full text of the judgment, click here

The High Court has held that a claimant who failed to establish a legitimate claim to a patent was not entitled to relief from the comptroller under section 37(2) of the Patents Act 1977. Although the claimant had proved that the earlier decision granting the patent had been based on perjured evidence, the court strictly applied the doctrine of judicial estoppel in refusing to grant relief in a subsequent action.

To read the full text of this judgment, click here

The Patent Office Hearing Officer held that where an employee designed an invention as part of a special assignment for his employer and the invention might reasonably be expected to result from the carrying out of his duties, the invention will belong to the employer. The Hearing Officer did not consider that a clause reverting ownership of the invention to the employee in the event of the employer’s failure to exploit the invention was triggered by the employer’s liquidation.

For the full text of this 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

The original publication date for this article was 14/12/2006.