Another win for perfume brands before the CJEU

Does the sale of a perfume tester bottle bearing the perfume house's trade mark but also a notice that it is "not for sale" infringe the relevant trade mark?

Mismatch of patent + marketing authoristion + product = SPCs rejected

The Patents Court has considered Yeda Research Development Ltd's appeal from the Comptroller who refused to grant it Supplementary Protection Certificates (SPCs) in respect of its combination treatment for tumours.

Ambush marketing – did it all kick off in South Africa?

So, the World Cup is almost over. Spain or the Netherlands will be the victors on the pitch, but who has triumphed in marketing terms? The official sponsors, which have paid many millions for the privilege? Or, the companies seeking to develop an unofficial connection by ambush marketing?

The scope of DNA patents - ECJ's decision in Monsanto v Cefetra

The Court of Justice of the European Union (CJEU) handed down its decision on the scope of protection to be afforded to DNA sequence patents. 

Medeva's SPC applications: the Court of Appeal refers questions to the ECJ

There has been a dispute concerning whether Medeva BV was entitled to obtain supplementary protection certificates for its whooping cough vaccine.

US Supreme court hedges its bets and fails to deliver clarity in business methods case

The US Supreme Court gave judgment on Monday 28 June 2010  in the long awaited Re Bilski case concerning the patentability of business methods.

'Henry' gets a clean win in the High Court

Numatic was successful in its claim of passing off against Qualtex in respect of Qualtex's vacuum cleaners which mimicked the basic Henry model shape and black bowler hat lid but not its surface decoration (smiley face and red colour ways).

Court of Appeal reluctantly applied the ECJ's guidance in L'Oreal v Bellure

The Court of Appeal has today handed down its long-awaited decision in L'Oreal v Bellure. The decision implements the responses given by the European Court of Justice (ECJ) (as it then was) in June 2009 to questions referred to it by the Court of Appeal.

Theseus, George Washington's axe and patents for a caged bottle - could you make it up?

Floyd J decision in Schütz (UK) Ltd v Werit UK Ltd & Another.

Take action - Trade marks can be infringed by a competitor's internet keyword use (but Google claims a victory anyway).

The European Court of Justice (ECJ) has given judgment in four cases concerning alleged trade mark infringement via Google's adwords internet advertising service.

'Round up' on the scope of DNA patents - Monsanto Technology LLC v Cefetra BV and Others

A leading edge patent law hot potato is patents for DNA sequences. It appears that the protection offered by such patents in the EU may be more restrictive than many anticipated.

Tricky trade mark issues - toy shapes and trading names

In the Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Others case, the English Court of Appeal has provided guidance on what is required for a business located elsewhere to have goodwill in England which is sufficient enough to base a passing off action on.

Reproduction of Opel logo on imitation toy cars does not infringe trade mark rights

The ECJ's ruling in the Opel v Autec toy cars case in January 2007 was a landmark in European trade mark law. The case is always referred to whenever the question of whether "trade mark use" is required to establish trade mark infringement arises.

Dilution of vodka prevented by High Court

In the Diageo North America, Inc r v Intercontinental Brands case the owners of the famous 'Smirnoff' brand of vodka have succeeded in establishing extended passing off against InterContinental Brands in respect of its Vodkat alcoholic beverage.

Upstream without a paddle

The Court of Appeal has found in Eli Lilly and Company v Human Genome Sciences Inc that HGS' patent for a protein called by HGS "Neutrokine-a", antibodies to it and the polynucleotide sequence encoding for it was invalid for lack of industrial application.

Dr Reddy v Eli Lilly: the Court of Appeal consigns the old UK legal test for the validity of selection patents to history and looks to Europe for the answer

Exhaustion of rights, authorised dealerships and euro defences

A dealer in infringing grey goods sought to have a trade mark proprietor's ability to enforce its rights suspended.

Digital Economy Bill: controversial online copyright infringement provisions

A new Digital Economy Bill is being debated in the UK. It contains provisions designed to tackle online copyright infringement which are proving to be very controversial.

Patent infringers rolled over - Boegli-Gravures SA V Darsail-ASP Ltd

In a judgment, in which he found valid and infringed a mechanical EP(UK) patent relating to foil used in packaging, an English High Court judge has also provided guidance as to establishing infringement or a threat to infringe by way of a test purchase

CTM for CANNABIS is too descriptive of beer

The Court of First Instance (CFI) has upheld a invalidity finding in relation to CANNABIS as a community trade mark for beer and other goods in classes 32 and 33.

Revoking unused marks and applying L'Oréal v Bellure to infringement arguments

A trade mark infringement claim will often provoke a counterclaim for revocation for five years non-use.

Does the use of another trade mark as internet keyword infringe? The Advocate General doesn't think so

In an opinion which many may find quite political, Advocate General Poiares Maduro has delivered his views to the European Court of Justice (ECJ) in the Google AdWords references.

City name case

The Japan Patent Office has reported that the Chinese trade mark authorities, responding to a request from Tokyo, rejected applications to register eight prefectural names in Japan as brands for agricultural and other products.

Guangzhou passes legislation to bolster intellectual property rights protection at exhibitions

Guangzhou passes the Measures on Protection of Intellectual Property Rights at Exhibitions in the city's 87th Executive Session of the 13th Administration.

Tactical trade marks and bad faith bunnies?

The European Court of Justice has provided guidance to the national Austrian court on the factors to be considered when determining whether a registration applied for in the knowledge that other very similar marks were being used in the Community.

Shanghai company pays 500,000 yuan for distributing counterfeit Louis Vuitton bags

In this case concerning counterfeit Louis Vuitton bags, the defendants were a couple called Lin Yizhong and Wu Beiwen and Zhong Wen was their trading company.

Beijing: Microsoft lawsuit

Microsoft filed a lawsuit against a do-it-yourself PC vendor Beijing Strong Well Future Technology Development in Zhongguancun, accusing it of using pirated Microsoft software.

Looking to raise some cash? Against IP?

To the surprise of many, Morgan Stanley has just announced a new US$250 million intellectual property securitisation for Vertex Pharmaceuticals, a large US bio-tech company.

Injunctions for breach of confidence - the 'springboard principle'

Vestergaard Frandsen A/S and the other claimants (VF) are in the business of the manufacture and sale of mosquito nets under the name PermaNet. They had developed a database relating to the manufacture of these nets referred to as the "Fence" database.

Proposals for the reform of the Patents County Court

Proposals have been put forward by the Working Group set up by the Intellectual Property Court Users Committee to reform the cost regime and procedures of the English Patent County Court.

Lacoste bites Wenzhou shoemaker

Six years after its settlement over a trade mark dispute with Hong Kong Crocodile, French designer Lacoste has launched another offensive. The company recently brought a trade mark infringement case before the Beijing No.2 Intermediate People's Court.

Baijia sues OKAI over trademark infringement

Sichuan Baijia Food Company, one of the largest instant noodle manufacturers in China, has filed a lawsuit against OKAI Import Export GmbH with the Munich District Court in Germany, asking the court to cancel OKAI's trade mark application.

Danfoss prevails in trademark first instance

Danfoss, a leading player in refrigeration and air conditioning equipments and parts, alleged in court that a refrigeration equipment company in Zhejiang was making products labelled with the Danfoss trade mark.

Google China drops Beijing free rider

Search engine giant Google began its formal use of Chinese name (Guge) in 2006 when it established Chinese subsidiary Google China. Just one hour later, a company named Beijing Guge Technology (led by Tian) obtained government approval to be in business.

Launch of China IP Law Search, Beijing

IPR2, together with the Ministry of Commerce, will launch a new search tool for IP-related legal texts called China IP Law Search.

Marketing authority for racemate does not invalidate SPC for its enantiomer

In an appeal concerning the validity of a patent for an enantiomer of  a racemic mixture and a Supplementary Protection Certificate based on that patent and marketing authorisation, the Court of Appeal found both the patent and SPC valid.

The English court's turn to make a reference to the ECJ in yet another Google keyword trade mark dispute

In yet another trade mark dispute resulting from Google's AdWord service, the UK High Court has decided to refer a "comprehensive" list of questions to the European Court of Justice before the hearing of the main trial.

Big boost for brands

In a dispute concerning downmarket fragrances intended to be smell-a-likes for several of L'Oreal's famous perfumes, the European Court of Justice (ECJ) has provided guidance to the UK Court of Appeal which will be welcomed by many brand owners.

Is eBay an IP pirate or merely the unaware ocean over which such pirates may sail?

In L'Oreal v eBay, the English High Court has held that eBay was not jointly liable for the trade mark infringements committed by several users of its website (named in the action as the fourth to tenth Defendants).

Pirate Bay has no safe harbour in E-Commerce Directive

The Stockholm District Court has issued its decision on case B13301-06 regarding the infamous Pirate Bay website. It concerns not only criminal breaches of copyright but also the E-Commerce Directive (2000/31/EC) safe harbour provisions.

Does my mark have a reputation in the Community?

Advocate General Sharpston has given her view on the question of whether a community trade mark which had been proven to have a reputation but only in Austria could be considered to have a "reputation in the Community".

Software patents in Europe

Alison Brimelow, President of the European Patent Office (EPO), has entered the fray on the vexed subject of the patentability of software and has referred various questions to the Enlarged Board of Appeal.

IP in the UK budget

A first glance through the Budget - and the 222 pages of notes produced by the Treasury - didn't look promising.

European Court gives boost to selective distribution strategies for luxury trade mark owners

The European Court of Justice (ECJ) has provided guidance, which strengthens the ability of luxury trade mark owners to maintain and enforce a selective distribution network for branded goods.

Questions on Supplementary Protection Certificates referred to the European Court of Justice

The English High Court has sought guidance from the European Court of Justice (ECJ) relating to the validity of a Supplementary Protection Certificate.

Google suffers setback in Adword dispute in US Court of Appeals

The US Court of Appeals for the Second Circuit has allowed an appeal by Rescuecom that Google's use of Rescuecom's trade mark could amount to "use in commerce".

Getting their © grooves back

Many IP agreements include a clause which specifies certain consequences if material breaches are not remedied after a period of notice. More clarity on this issue has now come from the English High Court.

Silberquelle v Maselli: ECJ confirms Advocate General's opinion on when promotional use of a registered trade mark is not "genuine use"

The European Court of Justice has confirmed that where a proprietor of a mark affixes that mark to free items that it gives to purchasers of its goods, it does not make genuine use of that mark in respect to the class related to the items.

Sofia, so good? First IP reference to the ECJ from Bulgaria clarifies the scope of protection for databases

The right to prohibit extraction and re-utilisation of a substantial part of a protected database was established more than a decade ago by Directive 96/9/EC. The European Court of Justice has only provided guidance on its interpretation in three cases.

Patentable subject matter again - decision of Mr Justice Lewison in AT&T Knowledge Ventures LP's Application and CVON Innovations Limited's Application

Mr Justice Lewison has today handed down his judgment in two appeals from the Patent Office. The cases raised similar issues about excluded subject matter.

Opinions of the House of Lords in Generics (UK) Limited & others v. H Lundbeck A/S

The House of Lords has today handed down its opinions in the patent revocation battle between Generics and Lundbeck relating to Lundbeck's patent for the (+) enantiomer of citalopram, a leading anti-depressant drug.

Research scientist becomes a millionaire following first ever successful UK employee inventor compensation scheme claim

The UK High Court has granted its first-ever award of compensation under section 40 of the Patents Act 1977.

The ECJ provides further re-packaging guidance in the ZOVIRAX parallel imports case

The European Court of Justice has ruled on The Wellcome Foundation Ltd v Paranova Pharmazeutika Handels GmbH, 22 December 2008 (C-276/05).

Do smell-a-likes and look-a-likes take unfair advantage?

Advocate General Mengozzi of the European Court of Justice (ECJ) has delivered his opinion on the dispute between L'Oreal and Bellure relating to "smell-a-like" perfumes and "look-a-like" packaging.

Notable changes in the Third Amendment to China's Patent Law

In January 2009, China's National People's Congress finally approved the third amendment of China's Patent Law after more than two years' deliberation.

Did you know they were going to sell the marked goods in the EU? What happens when a witness lies?

KJM Superbikes Ltd v Hinton [2008] EWCA Civ 1280 was an appeal by KJM Superbikes Limited against a decision by Sir Andrew Park in the High Court in which he denied KJM permission to bring proceedings for contempt of court against Mr Anthony James Hinton.

BUD v BUD - Appellation of origin v Community trade mark applications

Budejovický Budvar, národní podnik v Office of Harmonization in the Internal Market - with intervener Anheuser Busch Inc. Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06: Decision of the Court of First Instance - 16 December 2008).

Europe rules against embryonic stem cells patent

The Enlarged Board of the European Patent Office has held Wisconsin Alumni Research Foundation's patent application to be contrary to morality for the purposes of Article 53(a) of the European Patent Convention.

Advocate General's opinion in Case C-59/08 Copad v Dior - a broad understanding of quality control in trade mark licences?

In Copad v Dior the Advocate General (AG) has advised the European Court of Justice (ECJ) on whether a licensee's failure to comply with provisions in a trade mark licence may prevent the exhaustion of the owner's rights in the mark.

Pharmaceutical Sector Inquiry Preliminary Report

The European Commission has delivered its preliminary report on the findings from the Pharmaceutical Sector Inquiry launched in January 2008.

ECJ guidance as to how to establish dilution

Music to the British Hospitality Association's ears

In 2003 the CPDA was amended so as to substantially remove the exemption under which pubs and similar establishments had been publically playing background music via broadcasts without the need for a licence relating to the broadcast sound recordings.

Collaborating over inventions - court guidance on the meaning of common clauses

In the case of Automotive Latch Systems Limited v Honeywell International Inc, the Commercial Court provided some guidance on the courts' view on the interpretation of common clauses found in many collaboration agreements relating to inventions.

"ZV Snore Solution Spray" product name is misleading says the Advertising Standards Authority

The Advertising Standards Authority has made it clear that a product or brand name (i.e. ZV Snore Solution Spray) can in itself be misleading and, its use in marketing materials, be in breach of the Committee of Advertising Practice Code.

Germany: patent litigation reform on its way?

The German Federal Government has published proposals for reform which have the potential to drastically alter the nature of patent invalidity litigation in Germany.

Conflicting pharmaceutical trade marks

The Court of First Instance has upheld the opposition by Aventis Pharma SA against Nycomed GmbH's application for the Community trade mark PRAZOL (Case T-95/07).

Lessons on chemical classes

In July this year, Wragge & Co's IP team reported on the German Appeal Court decision on Eli Lilly's patent for the anti-psychotic drug olanzapine.

Enantiomer of a known medicament held inventive and entitled to SPC

Against the backdrop of a number of recent European-wide negative decisions in which the validity of Supplementary Protection Certificates (SPC) was in contention, Daiichi's SPC for its Levofloxacin patent has been upheld.

Be careful what you ask for: Servier payout over £17 million to Apotex under a cross-undertaking in damages

On 9 October 2008, Servier was ordered to pay generics company Apotex £17.5 million under a cross-undertaking in damages given by Servier, in exchange for the grant of an injunction.

A company name that is identical or too similar to your brand name? The pro and cons of the Company Names Tribunal

What can you do if you find out a third party has registered a UK company with a name that is identical or similar to your brand name?

Germany: Broad-based database protection

Following a preliminary reference from the German courts, the European Court of Justice has given further guidance relating to the Database Directive.

Court of Appeal still considers EPO case law on computer programs exclusion to be inconsistent

Charitable trade mark use - is it "genuine"?

Can charities and other non-profit making organisations safely keep hold of their registered trade marks when they don't use them on any goods they sell or in respect of any services they provide for payment? Are such marks at risk of being revoked?

Listen up! - the EPO is required to hear witness evidence on prior use

An interesting development has just hit the European Patent Office (EPO). It concerns the situations in which the EPO will now hear oral witness evidence concerning an alleged prior use.

Lucasfilm v Ainsworth - a new hope for copyright clarity?

In a case concerning the costumes of Star Wars characters, the High Court has provided guidance on what articles can amount to "works of artistic craftsmanship" and/or "sculptures".

Eli Lilly v Human Genome Sciences - gene sequence patents get a dressing down

In Eli Lilly v Human Genome Sciences, the English Patents Court sets out guidelines for the first time on the industrial application criteria for patentability (the EPC equivalent to the US "utility" requirement).

Stradivarius Espana v OHIM - illegible marks: you might not understand them, but they are not confusing!

On 20 June 2001, Cristina Ricci's predecessor in title applied to register the device mark "Stradivari 1715" (the opposed mark) as a Community Trade Mark for goods in classes 14, 16 and 18.

Patent validity - the Lords take a step in the right direction

The House of Lords has delivered a patent law decision which is likely to be welcomed by innovative companies throughout the UK and the pharmaceutical industry in particular.

Germany: patent litigation revisited

In Germany, applications for interim injunctions to prevent alleged patent infringement have until now been rejected by the infringement court if the patent in suit has been revoked by the Federal Patents court at first instance.

China's National Intellectual Property Strategy: a step toward a better IP environment

China's State Council released its Compendium of China National Intellectual Property Strategy in June 2008. This is likely to lead to significant changes to the IP system in China.

Construction - is it law or fact?

If a narrow construction of a patent has been made by a court in earlier proceedings, does this mean an infringement action which requires a wider construction to succeed is doomed?

Are Modchips now legal?

There has been a lot of "noise" on the net suggesting that due to the latest criminal case relating to an alleged mod chips related offence.

The ECJ has ruled but who has won? H3G have claimed victory in the long running "bubbles" comparative advertising case, but the truth is not so clear...

The European Court of Justice (ECJ) has declined to follow the opinion of Advocate General Mengozzi.

Trade marks: equal treatment for all applicants?

Should applications for trade marks at EU member state registeries all be treated equally? The European Court of Justice will shortly have to consider this issue. Graf von Westphalen have put together an analysis of this important development.

IP update May 2008

The long-awaited Court of Appeal judgment in the Actavis UK Ltd v Merck & Co Inc patent case has been handed down.

Generics v Lundbeck

Within its judgment in Generics v Lundbeck, the Court of Appeal has provided important guidance on the judgment of the House of Lords in Biogen v Medeva regarding the enabling disclosure the specification must provide to support the claims in the patent.

Search engine sponsored links - important developments for trade mark owners

The UK High Court has been asked to consider whether by offering keywords to advertisers which are the same as or similar to another's trade mark, Yahoo infringed that mark.

Exclusive licensee's Dalek claim is exterminated

The publisher of the original Dr Who books has been unsuccessful in its claims of copyright infringement against the BBC for its publication of a Dalek Survival Guide. To learn more about the High Court judgment, read our expert analysis.

VAT on electronic services - the rules are changing

The rules on charging VAT on electronic services are changing.

ASA v Ryanair - OFT, you decide!

After banning its ninth Ryanair advert in just two years, the Advertising Standards Authority (ASA) has referred Europe's largest budget airline to the Office of Fair Trading.

Don't blame the forum shoppers, blame the European Patent litigation system

In the context of pan-European patent litigation relating to BlackBerry mobile devices, the Court of Appeal has provided some useful guidance.

IP update

Three intellectual property alerts and analyses from Wragge & Co's Intellectual Property team.

Are trade marks comparatively useless?

All change - UKIPO's practice in rejecting all computer program claims is wrong

Trade marked goods and stopping over in Europe

IP - 2007 roundup

ECJ determination - Alfredo Nuno v. Leonci Franquet

In Alfredo Nuno v. Leonci Franquet, the ECJ was asked to consider the provisions of the Trade Marks Directive 89/104/EEC of 21 December 1988 which deal with the effect of an earlier unregistered mark on a subsequent trade mark registration.

EPC 2000 and ECJ determination - Alfredo Nuno v. Leonci Franquet

IP update

Two alerts today, both relating to patents. The first is a reminder of the changes to the UK Patent Act, which will take effect on 13 December in order to implement the EPC 2000. The other concerns a novelty for the UK courts.

New Tax Regime for Intellectual Property and Intangible Assets

Wragge & Co promotes new IP partner in Munich

Wragge & Co LLP has appointed a new intellectual property partner. Dr. Alexander Bayer becomes a partner in the firm's Munich office on 1 May, taking the total number of partners in Wragge & Co's international IP practice to 10.

Wragge & Co wins Employment Team of the Year

Wragge & Co LLP has been named Employment Team of the Year at the Lawyer Awards 2009. The firm triumphed over competition from Cloisters, DLA Piper, Freshfields Bruckhaus Deringer, Linklaters, Osborne Clarke and Russell Jones & Walker to secure the win.

Wragge & Co named European High-Tech Law Firm of the Year

Wragge & Co LLP Intellectual Property (IP) team has been named European High-Tech Law Firm of the Year by Managing Intellectual Property.

Two victories in one week for Wragge & Co's IP team

Wragge & Co LLP Intellectual Property (IP) team has secured its second victory in one week in the Dyson Technology Limited v Samsung Gwangju Electronics Co., Limited High Court case.

Wragge & Co in FT top ten for innovation

Wragge & Co LLP has been named one of Europe's most innovative law firms in the Financial Times' survey of innovation in the legal profession. The firm was ranked in seventh place in the FT Law 50.

Wragge & Co expands IP practice with two new partners

Wragge & Co LLP has boosted its intellectual property practice with the appointment of Alexandra Brodie and Dr Luke Kempton as partners.

Wragge & Co IP team tops the charts in Managing IP's World IP survey

Wragge & Co LLP Intellectual Property team has been ranked in the top tier for contentious trade mark work in Managing Intellectual Property's global survey.

Wragge & Co IP litigators secure Court of Appeal victory for Cinpres

Wragge & Co LLP IP team has secured a hard-fought Court of Appeal victory for Cinpres in the long-running Cinpres Gas Injection Ltd v Melea Ltd case.

Wragge & Co named IP law firm of the year

Patent entitlement: when inventions become monsters

Never has the commercial value of patents been so well understood in the business community as in recent years.