Category: Intellectual Property

Novartis Ag and Universtiy College London; Novartis Ag and Institute of Microbiology and Epidemiology (Patent): IPO 12 Feb 2003

IPO Supplementary Protection Certificates – The co-applicants provided authorisations granted in Switzerland in support of their applications but reasoned that these authorisations extended to Liechtenstein and not the rest of the community such that the period of the certificates determined by Article 13(1) should not be calculated on the basis of these authorisations.
This was contrary to the examiner’s preliminary view. References to the first authorisation for placing the product on the market in the ‘Community’ as found in Article 8(1)(c) and 13(1) of the Regulation were considered to have been adapted by point 8 of Protocol 1 to the European Economic Area (‘EEA’) agreement. Adapted references to ‘Community’ being understood as references to territories of the contracting parties to the EEA agreement. Since Liechtenstein’s accession to the EEA a marketing authorisation granted by the Swiss authorities but immediately effective in Liechtenstein under its Heilmittelgezetz (‘HMG’) law was considered an authorisation in the Community and thus capable of determining the duration of the certificates.
The hearing officer concluded:
Point 8 of Protocol 1 on horizontal adaptations to the Agreement applies to Article 13(1) of the EEA version of the Regulation in such a way that the reference in that Article to the territory of the ‘Community’ should be understood as a reference to the territories of the Contracting Parties to the Agreement. Thus, an authorization to place a medicinal product on the market, granted in accordance with the national legislation of an EEA/EFTA State, is relevant for the purposes of Article 13(1) of the Regulation if it is the first in the EEA;
a marketing authorization, granted by the Swiss authorities but effective in Liechtenstein under its HMG law, can be relevant for the purpose of Article 13(1) of the Regulation even though Annex 10 to Decision No. 1/95 of the EEA Council requires that Liechtenstein shall not deliver certificates for medicinal products as laid down in the Regulation; and the adaptation to Annex II to the Agreement made by EEA Council Decision No. 1/95, which requires that the provisions on the free movement of goods contained in the Agreement or in acts referred to shall be applicable to exports from Liechtenstein to the other Contracting Parties only to products in conformity with the acts referred to in Annex II, has no bearing on the question whether a marketing authorization in accordance with Liechtenstein’s HMG law should be relevant for the purpose of determining the duration of a certificate in another EEA Member State in accordance with Article 13(1) of the Regulation.
Accordingly the Hearing Officer found the Swiss authorisations admitted by the co-applicants should determine the duration of the certificates by virtue of their effect in Liechtenstein.

Judges:

Mr R Walker

Citations:

SPC/GB/00/013, SPC/GB/99/012, [2003] UKIntelP o04403

Links:

Bailii

Statutes:

Council Regulation (EEC) No. 1768/92 13(1)

Intellectual Property, European

Updated: 16 October 2022; Ref: scu.455476

Stalinskaya (Trade Mark: Opposition): IPO 28 Jan 2003

IPO The applicants had applied for cross-examination of the opponents’ witness. The Hearing Officer refused; he stated that the lateness of the application and the cost of attendance had not been the deciding factors. Cross-examination should be reasonable in all the circumstances. The grounds of opposition would require him to consider ‘normal and fair’ use; an essentially theoretical matter.

Citations:

[2003] UKIntelP o02503, O/025/03

Links:

Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455456

Omega (Trade Mark: Revocation) (O-028-03): IPO 30 Jan 2003

IPO Section 46(1)(a): – Revocation failed.
Section 46(1)(b): – Revocation successful.
1. The Hearing Officer had to decide whether watches made of gold and/or incorporating precious stones were items of jewellery. He decided such watches were not items of jewellery.
2. The registered proprietors appealed to the Appointed Person. Appeal partially allowed in that registered proprietors allowed to retain a slightly wider specification.
The registered proprietors registration dated from 1927 and the original specification read ‘goods of precious metals and jewellery, and imitations of such goods and jewellery’. In 1995 the registration was reclassified into Classes 5, 9, 14 and 16 with the Class 14 specification reading as originally filed. The proprietors accepted that there had been no use of their mark in respect of any goods in Classes 5, 9 and 16 and that revocation of the mark in these Classes should follow. However, they wished to retain in full their Class 14 specification.
The applicants for revocation had not attacked the Class 14 registration in full since they accepted that the registered proprietors sold watches under the mark OMEGA. They, however, sought revocation of all the other goods.
The registered proprietors filed evidence of use of their mark and sought to show that there had also been use on clocks. Their evidence, however, did not show use of the mark OMEGA in relation to such goods. The proprietors also sought to argue that as many of their watches incorporated precious stones and were made of gold, they would be referred to in the context of jewellery. The Hearing Officer did not agree. In his view watches were not jewellery and he therefore reduced the registered proprietors’ Class 14 specification to ‘wrist watches and parts and fittings therefore; all being made of precious metals or imitations of precious metals’. Revocation of other goods to be from the date of the application for revocation.

Judges:

Mr D Landau

Citations:

O/028/03, [2003] UKIntelP o02803

Links:

Bailii

Statutes:

Trade Marks Act 1994

Citing:

See Also – Omega (Trade Mark: Revocation) (O-027-03) IPO 30-Jan-2003
IPO Section 46(1)(a) – Partial Revocation failed
Section 46(1)(b) – Partial Revocation action (partially successful)
The above registered mark was registered for a range of goods in Class 9 and the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455451

Omega (Trade Mark: Revocation) (O-027-03): IPO 30 Jan 2003

IPO Section 46(1)(a) – Partial Revocation failed
Section 46(1)(b) – Partial Revocation action (partially successful)
The above registered mark was registered for a range of goods in Class 9 and the partial revocation requested was in respect of all goods other than ‘Sports timing equipment’.
The registered proprietors claimed use in respect of a range of goods while admitting that there had been no use in respect of ‘Life saving and weighing instruments and apparatus’. The registered proprietors evidence in support of their claims was somewhat vague and unfocussed and in many instances statements made were not supported by the exhibits and documentation. Having carefully sifted through the evidence the Hearing Officer concluded that the registered proprietors had only shown use in respect of ‘measuring and signalling apparatus and instruments, all for use in sport’ and that the other goods in the registration should be cancelled from the date of filing of the application for revocation (Section 46(1)(b)).
Even though Section 46(1)(a) had been quoted as a ground of revocation all the evidence and discussion had been in relation to the five year period prior to the filing of the application. As the registration dated from 1951 the Hearing Officer did not feel able to consider the question of non-use for the five year period following registration.

Judges:

Mr D Landau

Citations:

O/027/03, [2003] UKIntelP o02703

Links:

Bailii

Statutes:

Trade Marks Act 1994 46(1)(a) 46(1)(b)

Cited by:

See Also – Omega (Trade Mark: Revocation) (O-028-03) IPO 30-Jan-2003
IPO Section 46(1)(a): – Revocation failed.
Section 46(1)(b): – Revocation successful.
1. The Hearing Officer had to decide whether watches made of gold and/or incorporating precious stones were items . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455450

Omega (Trade Mark: Revocation) (O-026-03): IPO 30 Jan 2003

IPO Section 46(1)(a) – Partial revocation action failed
Section 46(1)(b) – Partial revocation successful (in part).
The above registered mark covered a range of services in Class 37 and included ‘Maintenance and repair of horological and chronometric instruments’ which were excluded from the request for revocation, it being accepted by the applicants that the registered proprietors trade in watches and offer a repair service in relation to such goods.
The registered proprietors filed evidence to support a claim that they had used their mark in relation to the full list of registered services. The Hearing Officer examined the evidence carefully and accepted that the registered proprietors’ activities in relation to measuring, checking information etc apparatus were in relation to sports and he restricted the specification of the registered mark accordingly. This in turn restricted the coverage of information services which applied to this new restricted area of proved activity.
All the evidence filed related to the five year period prior to the filing of the application and the Hearing Officer decided that the revoked goods should be excluded from the date of the application which was 14 September 2001. As both parties had had a measure of success the Hearing Officer decided that both sides should bear their own costs.

Judges:

Mr D Landau

Citations:

474165, 699057, 1456848, [2003] UKIntelP o02603

Links:

IPO, IPO, IPO, Bailii

Intellectual Property

Updated: 16 October 2022; Ref: scu.455449

Ford Motor Company (Patent): IPO 5 Dec 2002

The application was concerned with a method of creating items according to a schedule based on the location to which the items were to be transported. The examiner had not searched the application because in his view it related to a method of doing business. A report under s18(3) had been issued to the effect that the invention was not patentable by virtue of section 1(2)(c) and offering the applicant the opportunity to be heard or withdraw the application. In the absence of any response from the applicant the HO refused the application on the grounds that the invention related to a method of doing business and was thus excluded.

Judges:

Mrs P Everett

Citations:

[2002] UKIntelP o01003, GB 0123911.0

Links:

PO, Bailii

Statutes:

Patents Act 1977 1(2)(c) 18(3)

Intellectual Property

Updated: 16 October 2022; Ref: scu.455405

Camfil Ab v Interfilta (UK) Ltd (Patent): IPO 10 Dec 2002

IPO Before a decision on an application under section 72 issued uninvited submissions were received from the defendants arguing that there had been irregularities at the substantive hearing which warranted reopening the proceedings. A further hearing was held to consider these submissions and, in his decision, the HO indicated that, since the matters raised could and should have been raised at the substantive hearing, he intended awarding the claimants a lump sum which approximated to the full costs that they had incurred in dealing with the submissions. The defendants were allowed an opportunity to submit specific and properly argued comments on the schedule of costs provided by the claimants.
The defendants raised a number of general arguments to support their view that the parties should bear their own costs but the HO pointed out he had already considered these arguments at the hearing before deciding to award full costs to the claimants. The defendants also argued that the schedule included costs relating to matters not considered at the hearing. The claimants, however, maintained that all the costs related to issues which they understood would be argued at the hearing. The HO agreed with the claimants who had been put in the position of preparing their case without knowledge of the issues they needed to address – the first indication of the case which the defendants intended to argue had been provided in their skeleton argument filed the day before the hearing.
Since the defendants had made no submissions on the specific items in the schedule there was no reason to suppose that any of the costs were unreasonably high or unreasonably incurred. The HO therefore directed that Interfilta (UK) Ltd should pay Camfil AB their full costs of 12805.75.

Judges:

Mr P Hayward

Citations:

O/498/02, [2002] UKIntelP o49802

Links:

Bailii

Citing:

See Also – Camfil Ab v Interfilta (UK) Ltd (Patent) IPO 5-Oct-2001
IPO During the evidence rounds of a revocation action, the applicant for revocation filed a supplementary statement of case with their evidence-in-reply, which brought in a completely new point. The patentee was . .

Cited by:

Cited – Camfil Ab v Interfilta (UK) Ltd (Patent) IPO 20-Aug-2003
IPO In an earlier decision ([2002] UKIntelP o39102) the HO held that all the claims were invalid but he gave the patentees an opportunity to submit amendments. The HO decided that the amendments offered did not . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 16 October 2022; Ref: scu.455394