The Unified Patent Court Agreement: Update

Austria became the first country to ratify the Unified Patent Court (UPC) agreement in 2013. It has been reported that Malta and France will shortly complete ratification procedures (click here).

There will be a Danish referendum in May 2014 on whether or not Denmark should ratify the Unified Patent Court (UPC) agreement (after the Danish government recently failed to secure the necessary majority for ratification). A further 10 European Union member states, including Germany and the UK, must ratify the UPC agreement for the unitary patent to take effect. The IPO President has praised Austria, France and Malta for swift progress made to date and has encouraged other countries to step up the pace.

Finally, European Justice Ministers have reached agreement on a European Commission proposal to complete the legal framework for Europe-wide patent protection. The proposal will update EU rules on the jurisdiction of courts and recognition of judgments (the "Brussels I Regulation") and pave the way for the Unified Patent Court to become operational. The proposal will now go to the European Parliament. The Parliament's Legal Affairs Committee is expected to vote on its report in February 2014, with a final plenary vote expected the following month.

Virgin Atlantic, Zodiac and Flat Bed seats: Court of Appeal upholds High Court decision

The Court of Appeal has upheld the decision that Virgin Atlantic's patents for airline seats are valid (the patents were amended in opposition proceedings in the European Patent Office) but that one patent was not infringed by the airline seats produced by Zodiac and used by the defendant airlines. The court also agreed that the UK courts could not challenge the decision by the EPO to grant a UK designation of one of the patents.

Court of Appeal confirms that Starbucks HK's Community trade mark for the word "NOW" is invalid

In the case of Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2013] EWCA Civ 1465, the Court of Appeal has upheld Mr Justice Arnold's ruling of 2012 and has confirmed that Starbucks HK's "NOW" Community trade mark for its internet television service in Hong Kong is invalid. Starbucks HK (no connection with the well-known chain of coffee shops) operated an internet TV service in Hong Kong and registered a Community trade mark (CTM) because it intended to enter the UK market. Sky announced its intention to launch a NOW TV service in the UK. Starbucks HK claimed trade mark infringement and passing off (click here for further details).

The Court of Appeal has confirmed that Starbucks HK's Community trade mark was invalid. The court agreed that the mark was devoid of distinctive character, was an everyday word and one which was used descriptively.

Concerning passing off, the court ruled that Starbucks HK had no protectable goodwill in the UK to bring a passing off action (Hong Kong was too far away from the UK for goodwill to extend to the UK) and Starbusks HK could not therefore prevent Sky's launch of "NOW TV". Starbucks HK's advertising activities to date were insufficient to establish goodwill by advertising in the UK.

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