Category: Intellectual Property

Samsung Electronics Co Ltd (Patent): IPO 8 Oct 2012

The application related to a method for selectively displaying images for example photographs of buildings, embedded in an electronic map. The Hearing Officer found the invention to be excluded as a progam for a computer but not as presentation of information. The application was refused.

Citations:

[2012] UKIntelP o34712

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465351

International Stem Cell Corporation (Patent): IPO 16 Aug 2012

IPO Patent applications GB0621068.6 and GB0621069.4 relate to methods where parthenogenesis is used to activate a human oocyte (i.e. stimulation of a human oocyte, without fertilisation by a sperm cell) to produce a parthenogenetically-activated oocyte or ‘parthenote’. GB0621068.6 concerns the production of human stem cells from such parthenotes, whilst GB0621069.4 concerns human synthetic corneas and corneal tissues derived from such parthenotes.
Stimulation of the human oocyte can be achieved using chemical or electrical parthenogenesis techniques. The stimulated human oocyte divides in a manner analogous to that of a fertilised human embryo, to produce a parthenogenetically-derived structure analogous to the blastocyst stage of normal embryonic development, from which stem cells can be obtained. These stem cells can then be used to obtain corneal tissue
The applicant argued that a parthenogenetically-stimulated human oocyte is not ‘capable of commencing the process of development of a human being just as an embryo created by fertilisation of an ovum can do so’ because they have an inherent biological limitation that prevents those activated oocytes from developing into a viable human being. When an oocyte is caused to divide by parthenogenetic stimulation, the absence of the paternal copy of the maternally-repressed genes prevents normal development of the parthenogenetic ’embryo’ to term – in particular, there is no development of the placental tissue.
The hearing officer found that on the basis of the judgment in CJEU case C-34/10, Brustle, which addressed a number of questions concerning inventions relating to human embryos and human embryonic stem cells, that a parthenogenetically-derived structure analogous to the blastocyst stage of normal embryonic development did fall within the definition of a ‘human embryo’ for the purpose of Paragraph 3(d) of Schedule A2 of the Patents Act 1977, which implements Article 6(2)(c) of European Directive 98/44/EC on the legal protection of biotechnological inventions. A parthenogenetically-stimulated human oocyte is considered, on the basis of the Brustle judgment to be capable of commencing the process of development even if it is not able to complete this development.
The claimed methods of producing stem cell lines and the claimed stem cell lines (GB0621068.6), and the claimed methods of producing synthetic corneas or corneal tissue and the claimed synthetic corneas or corneal tissue (GB0621069.4), were found to constitute uses of human embryos for industrial or commercial purposes, and are thus excluded from patentability under Paragraph 3(d) of Schedule A2 of the Act.

Judges:

Dr L Cullen

Citations:

[2012] UKIntelP o31612, O/316/12, GB0621069.4, GB0621068.6

Links:

Bailii

Statutes:

Patents Act 1977 76A(1) 77

Cited by:

Appeal from – International Stem Cell Corporation v Comptroller General of Patents ChD 17-Apr-2013
The company appealed against refusal of patentunder the provision restricting such for ‘uses of human embryos for industrial or commercial purposes’
Held: The matter was referred to the ECJ. . .
At IPO – International Stem Cell Corporation v Comptroller General of Patents ECJ 17-Jul-2014
ECJ (Advocate General’s Opinion) – Directive 98/44/EC – Legal protection of biotechnological inventions – Patentability – Stem cells – Stimulation by parthenogenesis of unfertilised human ova to create stem cells . .
At IPO – International Stem Cell Corporation v Comptroller General of Patents ECJ 18-Dec-2014
ECJ Grand Chamber – Reference for a preliminary ruling – Directive 98/44/EC – Article 6(2)(c) – Legal protection of biotechnological inventions – Parthenogenetic activation of oocytes – Production of human . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 November 2022; Ref: scu.465284

Anthony Timson and Cellxion Limited v MMI Research Limited (Patent) O/346/12: IPO 13 Sep 2012

ICO The claimants filed a request for disclosure which was opposed by the defendants on the grounds that that the request was vague and excessively broad. The Hearing Officer considered that the request was not proportionate in this case, would delay proceedings and would add unnecessarily to the costs incurred by the defendant. The claimants’ request was therefore refused.

Judges:

Mr P Slater

Citations:

[2012] UKIntelP o34612, O/346/12, EP1908319

Links:

Bailii

Intellectual Property

Updated: 06 November 2022; Ref: scu.465304

Fabio Passetti Et Al (Patent): IPO 3 Jul 2012

IPO The application relates to a computer system which implements a computer program for searching and displaying biological information stored in one or more databases by converting the information from the database(s) into a ternary matrix using three separate characters to represent biological information eg 0, 1 and |. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and the decisions in ATandT and Cvon and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than a program for a computer and the presentation of information as such.

Judges:

Mr B Micklewright

Citations:

[2012] UKIntelP o26012, GB0920058.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Intellectual Property

Updated: 06 November 2022; Ref: scu.465252

Bank of America Corporation (Patent): IPO 4 Oct 2012

ICO The application relates to a method of providing a financial ‘risk score’ within the authorisation process of a wireless financial transaction. The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the Court of Appeal decision in Symbian and concluded that the contribution did not have a relevant technical effect. The application was refused as no more than a program for a computer and a method for doing business as such.

Judges:

Mr S Brown

Citations:

[2012] UKIntelP o37912, O/379/12, GB0916278.5

Links:

Bailii

Statutes:

Patents Act 1977 1(2)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.465331

Duncan James Parfitt (Patent): IPO 10 Jul 2012

A request by Mr Parfitt for an opinion was found to cover essentially the same issues already considered by an earlier opinion and a decision reviewing that earlier opinion. The Hearing Officer taking into account all the circumstances therefore refused the second request for an opinion

Judges:

Mr P Thorpe

Citations:

[2012] UKIntelP o26512, GB2436776

Links:

Bailii

Statutes:

Patents Act 1977 74A

Intellectual Property

Updated: 06 November 2022; Ref: scu.465259

Hambleton of Sterling IP and Cold Spring Harbor Laboratory (Patent): IPO 6 Aug 2012

Berni Hambleton of Sterling IP initiated proceedings under section 72(1)(a) of the Patents Act 1977 for revocation of the patent on the grounds that the invention as defined in claims 1, 21 to 25 and 34 was not entitled to its earliest priority date, and that the invention as such lacked an inventive step over the cited prior-art. The patentees, Cold Spring Harbor, deny this and maintain that the invention is entitled to its priority date and that therefore the documents alleged to impugn its inventive step do not form part of the state of the art.
The patent provides a method of identifying a transformed or abnormally proliferating cell by determining the subunit composition of a complex that includes D-type cyclins and comparing it to the equivalent complex in normal cells. In normal cells, a quaternary complex of cyclin-dependent kinases (CDK), proliferating cell nuclear antigen (PCNA) and p21 is formed, but in transformed cells this complex is disrupted and the CDK becomes associated with a protein p16 whilst the cyclin is associated with another protein p19. The patent includes claims to the purified and/or recombinant polypeptide known as p16 (including the amino nucleic acid sequences thereof) and to antibodies to the proteins, and associated diagnostic test kits for use in the identification and treatment of cancer.
The Hearing Officer concluded that the invention was entitled to its priority date and that the cited priori art did not form part of the state of the art and hence the patent was considered valid and to involve an inventive step.

Judges:

Mr P Slater

Citations:

[2012] UKIntelP o30412, EP0665886

Links:

Bailii

Statutes:

Patents Act 1977 72

Intellectual Property

Updated: 06 November 2022; Ref: scu.465272

Nichia Corp v Argos Ltd: CA 19 Jul 2007

Judges:

Pill LJ, Rix LJ, Jacob LJ

Citations:

[2007] EWCA Civ 741, [2007] Bus LR 1753

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – Ungar v Sugg 1892
Lord Esher MR discussed the costs of patent infringement litigation: ‘Well, then, the moment there is a patent case one can see it before the case is opened, or called in the list. How can we see it? We can see it by a pile of books as high as this . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 November 2022; Ref: scu.258300

Mars UK Limited (Patent): IPO 16 Oct 2007

IPO The application relates to a foodstuff which has specific macronutrient content parameters, the macronutrients in question being protein, fat and carbohydrate, when used in a method of increasing the acceptance and enjoyment of the foodstuff to a cat.
The hearing officer found independent claims 1 and 6 to be lacking in clarity, with it not being possible to precisely determine the scope of the invention. Consequently, the hearing officer was unable to come to a definitive view regarding novelty. The application was refused.

Judges:

Mrs C L Davies

Citations:

[2007] UKIntelP o30407, GB 0329453.5

Links:

Bailii

Statutes:

Patents Act 1977 1(1)(a) 14(5)(b)

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 November 2022; Ref: scu.456828

X-Cen-Tek v EUIPO – Altenloh, Brinck and Co (Pax) (European Union Trade Mark – Judgment): ECFI 5 Oct 2020

European Union trade mark – Opposition proceedings – European Union word mark application PAX – Earlier figurative European Union and international trade marks SPAX – Relative ground for refusal – Dominant element – Lack of neutralization – Risk of confusion – Article 8 (1) (b) of Regulation (EC) No 2072009 [now Article 8 (1) (b) of Regulation (EU) 2017/1001] – Application of the law over time

Citations:

T-847/19, [2020] EUECJ T-847/19, ECLI:EU:T:2020:472

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 November 2022; Ref: scu.660634

Virgin Hair CompanyLondon (Trade Mark: Opposition): IPO 22 Oct 2018

Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Distinctive and dominant components
Sections 5(1), 5(2) and 5(3) Earlier Trade Marks – Treatment of descriptive / allusive elements
Other Issues – Colour issues
Other Issues – Domain name / company name

Citations:

[2018] UKIntelP o66918

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 November 2022; Ref: scu.631698

Jager and Polacek v OHIM: ECJ 18 Oct 2012

Appeal – Community trade mark – Opposition – Regulation (EC) No 2868/95 – Rule 18(1) – Legal nature of a communication from OHIM informing a party that an opposition has been found to be admissible – Right to an effective legal remedy

Citations:

[2012] EUECJ C-402/11

Links:

Bailii, Bailii

Jurisdiction:

European

Citing:

Opinion – Jager and Polacek v OHIM ECJ 5-Jul-2012
ECJ Opinion – Appeals – Community trade mark – Regulation (EC) No 40/94 – Regulation (EC) No 2868/95 – Procedure upon opposition to registration of a Community trade mark – Legal nature of the act adopted at the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.465014

Office For Harmonisation In The Internal Market (Trade Marks And Designs) (OHIM) v Tequila Cuervo, Sa De Cv: ECFI 3 Oct 2012

ECFI Community trade mark – Opposition proceedings – Application for the Community figurative mark TEQUILA MATADOR HECHO EN MEXICO – Earlier national and international word marks MATADOR – Relative ground for refusal – No likelihood of confusion – No similarity of the goods – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-584/10, [2012] EUECJ T-584/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b)

Jurisdiction:

European

Intellectual Property

Updated: 05 November 2022; Ref: scu.464810

Bimbo v OHMI – Panrico (Bimbo Doughnuts): ECFI 10 Oct 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark BIMBO DOUGHNUTS – Earlier national word mark DOGHNUTS – Relative ground for refusal – Article 75 of Regulation (EC) No 207/2009 – Article 76(2) of Regulation No 207/2009 – Article 8(1)(b) of Regulation No 207/2009 – Application for alteration – Admissibility

Citations:

T-569/10, [2012] EUECJ T-569/10

Links:

Bailii

Statutes:

Regulation No 207/2009 76(2)

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464798

Lancome v OHMI – Focus Magazin Verlag (Color Focus): ECFI 5 Oct 2012

ECFI Community trade mark – Invalidity proceedings – Community word mark COLOR FOCUS – Earlier Community word mark FOCUS – Relative ground for refusal – Likelihood of confusion – Similarity of the marks – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Abuse of right

Citations:

T-204/10, [2012] EUECJ T-204/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 53(1)(a)

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464808

Bial-Portela v OHMI – Isdin (Zebexir): ECFI 9 Oct 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark ZEBEXIR – Earlier Community word mark ZEBINIX – Relative grounds for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-366/11, [2012] EUECJ T-366/11, [2015] EUECJ T-366/11

Links:

Bailii, Bailii

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464797

Destra Software Ltd v Comada (Uk) Llp and Others: PCC 11 Jun 2012

The parties disputed property rights in certain computer software. Birss HHJ refused a transfer to the high court and said: ‘However, in fact at the moment we do not know whether this case will be anything like as complicated as it might seem. That will depend on the process of disclosure and rounds of pleadings which are inevitable in a software copyright case. Although it sounds complicated, in fact it is inevitable that copyright cases of this kind have to be looked at this way. They do require more management than other intellectual property cases.’

Judges:

Birss HHJ

Citations:

[2012] EWPCC 39

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – 77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.464530

Office For Harmonisation In The Internal Market v Lidl Stiftung and Co. Kg: ECFI 21 Sep 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark WESTERN GOLD – Earlier national, international and Community word marks WESERGOLD, Wesergold, and WeserGold – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Distinctiveness of the earlier marks

Judges:

Aziziz J Rapp

Citations:

T-278/10, [2012] EUECJ T-278/10, [2015] EUECJ T-278/10

Links:

Bailii, Bailii

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464453

Lumos Skincare Ltd v Sweet Squared Ltd and Others: PCC 13 Jun 2012

Citations:

[2012] EWPCC 28

Links:

Bailii

Citing:

See Also – Lumos Skincare Ltd v Sweet Squared Ltd and Others PCC 10-May-2012
The claimant alleged passing off by the defendant in the use of the trading mark LUMOS for nail care products. . .

Cited by:

Appeal from – Lumos Skincare Ltd v Sweet Squared Ltd and Others CA 6-Jun-2013
The claimant appealed against rejection of its claim in passing off.
Held: The appeal succeeded. . .
Appeal from – Lumos Skincare Ltd v Sweet Squared Ltd and Others CA 14-Jun-2013
The court settled on the form of order appropriate after finding that the defendant was guilty of passing off. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.464531

Video Research Usa, Inc., v Office For Harmonisation In The Internal Market (Trade Marks And Designs): ECFI 19 Sep 2012

ECFI Community trade mark – Community figurative mark VR – Failure to apply for renewal of the mark – Cancellation of the mark upon expiry of the registration – Application for restitutio in integrum – Article 81 of Regulation (EC) No 207/2009

Citations:

T-267/11, [2012] EUECJ T-267/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 81

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464463

Community Plant Variety Office v Jorn Hansson: ECFI 18 Sep 2012

ECFI Plant varieties – Decision by the CPVO to adapt, of its own motion, the official description of the variety LEMON SYMPHONY – Application for revocation of the Community plant variety right granted for the variety LEMON SYMPHONY – Application for annulment of the Community plant variety right granted for the variety LEMON SYMPHONY – Application for a Community plant variety right for the variety SUMOST 01 – Summons to attend oral proceedings before the Board of Appeal of the CPVO – Period of notice to attend of at least one month

Citations:

T-133/08, [2012] EUECJ T-133/08

Links:

Bailii

European, Intellectual Property

Updated: 05 November 2022; Ref: scu.464424

Starbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others: CA 13 Sep 2012

Citations:

[2012] EWCA Civ 1201

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others ChD 2-Nov-2012
The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a . .
SeeAlso – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
See Also – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.464265

L’Oreal Sa and others v Bellure Nv and others: CA 10 Oct 2007

Judges:

Keene LJ, Jacob LJ, Blackburne J

Citations:

[2007] EWCA Civ 968

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – L’Oreal Sa and others v Bellure Nv and others ChD 24-May-2006
Action for trade mark infringement and passing off – suggestion that goods of such superior quality that no possibility of confusion. . .
Appeal from – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .

Cited by:

Reference From – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoires Garnier and Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd ECJ 18-Jun-2009
loreal_bellureECJ2009
ECJ Approximation of laws – Trade marks Directive 98/104/EEC Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising Article 5(2) – Unfair advantage taken of the . .
See Also – L’Oreal Sa and Others v Bellure Nv and Others CA 21-May-2010
The claimant, manufacturers of perfumes, complained that the defendants, manufacturers of smell-alike products, were in breach of the Directive in marketing their products using lists which identified those of the claimants products to which they . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Commercial

Updated: 05 November 2022; Ref: scu.259766

Beloit Technologies Inc ; Beloit Walmsley Limited v Valmet Paper Machinery Inc and Valmet Paper Machinery (Uk) Limited: CA 12 Feb 1997

The court remarked, in patents cases, on the difficulty in differentiating between common general knowledge and what is known only by some, and the need to bear in mind that the notional skilled addressee is the ordinary man who might not have the advantages possessed by some employees of large companies.

Judges:

Lord Justice Hirst Lord Justice Aldous Lord Justice Schiemann

Citations:

[1997] EWCA Civ 993, [1997] RPC 488

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Seb SAa v Societe De’Longhi Spa CA 4-Jul-2003
The claimant’s action for patent infringement had been dismissed on the basis that the patent was invalid for obviousness.
Held: There was material before the judge on which he could properly conclude as he did on the presence of common . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.141389

UK Gymnastics Ltd and Others v British Amateur Gymnastics Association: CA 24 Mar 2021

Judges:

Lord Justice Arnold

Citations:

[2021] EWCA Civ 425

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – British Amateur Gymnastics Association v UK Gymnastics Ltd and Others IPEC 26-Jun-2020
Claim for trade mark infringement and passing off. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 November 2022; Ref: scu.660058

Brake and Another v Guy and Others (Preliminary Issue): ChD 25 Mar 2021

Citations:

[2021] EWHC 670 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Brake and Another v Guy and Others ChD 25-Mar-2021
Judgment on the trial of part of the claim for a final injunction and damages in respect of the alleged accessing, retention and deployment by the defendants of emails said to be private and confidential to the claimants and held within three email . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Information

Updated: 05 November 2022; Ref: scu.660066

BSH Hausgerate v EUIPO (Home Connect) (EU Trade Mark – Judgment): ECFI 2 Dec 2020

European Union trade mark – Home Connect figurative European Union trade mark application – Absolute grounds for refusal – Descriptive nature – Article 7 (1) (c) of Regulation (EU) 2017/1001 – Sufficiently direct report and concrete with the goods covered by the trade mark application – Lack of distinctive character – Article 7 (1) (b) of Regulation 2017/1001

Citations:

ECLI:EU:T:2020:584, T-152/20, [2020] EUECJ T-152/20

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 November 2022; Ref: scu.660699

Michael O’Mara Books Ltd v Express Newspapers plc: 1999

Neuberger J said: ‘It is an open question whether damages awarded pursuant to section 97(2) of the 1988 Act (which I shall call ‘additional damages’) are exemplary damages or aggravated damages or, as I am inclined to think, a separate category of damages which may have some features which are similar to those of exemplary or aggravated damages.’

Judges:

Neuberger J

Citations:

[1999] FSR 49

Jurisdiction:

England and Wales

Cited by:

Cited – Phonographic Performance Ltd v Ellis (T/A Bla Bla Bar) CA 18-Dec-2018
Additional infrimgement damages were not a fine.
The Society had succeeded in its claim of copyright infringement. The defendant having continued his breaches, it sought additional damages and committal for contempt. Having granted the committal the trial judge declined to award additional . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Damages

Updated: 05 November 2022; Ref: scu.632147

Innovation First v OHIM (Nano): ECFI 10 Feb 2015

ECJ Judgment – Community trade mark – Application for Community word mark NANO – Right to be heard – Obligation to state reasons – Examination of the facts of the Office’s own motion – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009

Judges:

H. Kanninen, P

Citations:

T-379/13, [2015] EUECJ T-379/13, ECLI:EU:T:2015:84

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(c)

Jurisdiction:

European

Intellectual Property

Updated: 05 November 2022; Ref: scu.542475

Infocit v OHMI – Din (Dinkool): ECFI 10 Feb 2015

ECJ Judgment – Community trade mark – Opposition proceedings – Application for Community word mark DINKOOL – Earlier international figurative mark DIN – Earlier national business identifier DIN – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) and Article 8(4) of Regulation (EC) No 207/2009

Citations:

T-85/14, [2015] EUECJ T-85/14, ECLI:EU:T:2015:82

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b) 8(4)

Jurisdiction:

European

Intellectual Property

Updated: 05 November 2022; Ref: scu.542474

Nicholas J J F Macphail (Patent): IPO 21 Dec 2012

IPO The proprietor of the patent requested a review of opinion 18/10 arguing that the examiner had by reason of how he had interpreted the specification of the patent wrongly concluded that a particular act did not constitute an infringement of the patent. The Hearing Officer, applying DLP Limited [2007] EWHC 2669, however concluded that the examiner had not clearly been wrong in construing the claim such that it did not cover the alleged infringing product. The opinion was therefore not set aside.

Citations:

[2012] UKIntelP o50312

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 November 2022; Ref: scu.467732

Microsoft Corporation v Motorola Mobility Llc: QBD 21 Dec 2012

‘the Part 20 Claimants (‘Motorola’) claim that the Part 20 Defendants (‘Microsoft’) have infringed European Patent (UK) No. 0 847 654 entitled ‘Multiple pager status synchronization system and method’ (‘the Patent’). Microsoft deny infringement and claim that the Patent should be revoked on the grounds of lack of novelty alternatively obviousness.’

Judges:

Arnold J

Citations:

[2012] EWHC 3677 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 November 2022; Ref: scu.467657

United States Polo Association, v Office For Harmonisation In The Internal Market: ECJ 6 Sep 2012

ECJ Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Likelihood of confusion – Word mark ‘U.S. POLO ASSN.’ – Opposition by the holder of the earlier word mark ‘POLO-POLO’

Judges:

Safjan P

Citations:

C-327/11, [2012] EUECJ C-327/11

Links:

Bailii

Statutes:

Regulation (EC) No 40/94 8(1)(b)

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463858

Winzer Pharma v OHMI – Alcon (Banoftal): ECFI 12 Jul 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark BANOFTAL – Earlier national word marks and KAN-PAN-OPHTHALMIC OPHTHALMIC – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation ( EC) No 207/2009

Judges:

Kanninen Rapporteur P

Citations:

T-346/09, [2012] EUECJ T-346/09

Links:

Bailii

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463254

Rivella International v OHMI – Baskaya Di Baskaya Alim (Baskaya): ECFI 12 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for the Community figurative mark BASKAYA – Earlier international figurative mark Passaia – Proof of genuine use of the earlier mark – Relevant territory – Article 42(2) and (3) of Regulation (EC) No 207/2009

Judges:

H. Kanninen, P

Citations:

T-170/11, [2012] EUECJ T-170/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463243

Union De Cervecerias Peruanas Backus Y Johnston v OHIM (Forme D’Une Bouteille): ECFI 12 Jul 2012

ECFI (French Text) Community trade mark – Absolute grounds for refusal – Request for three-dimensional mark – Shape of a bottle – Lack of distinctive character – Article 7, paragraph 1, sub b) of Regulation (EC) No 207/2009

Judges:

Kanninen P

Citations:

T-323/11, [2012] EUECJ T-323/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463250

Wall v OHMI – Bluepod Media Worldwide (Bluepod Media): ECFI 12 Jul 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark bluepod MEDIA – Earlier Community figurative mark blue spot and earlier international and national word marks BlueSpot – Article 8(1)(b) of Regulation (EC) No 207/2009

Judges:

Kanninen P

Citations:

T-227/11, [2012] EUECJ T-227/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463253

Guccio Gucci v Ohmi – Chang Qing Qing (Guddy): ECFI 12 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for the Community word mark GUDDY – Earlier Community word mark GUCCI – Relative ground for refusal – Likelihood of confusion – Highly distinctive character of the earlier mark by reason of the public’s recognition of that mark – Evidence – Article 8(1)(b) of Regulation (EC) No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009

Judges:

H. Kanninen, P

Citations:

T-389/11, [2012] EUECJ T-389/11

Links:

Bailii

Statutes:

Regulation No 207/2009 8(1)(b) 75

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463227

Hand Held Products v OHMI – Orange Brand Services (Dolphin): ECFI 12 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for Community word mark DOLPHIN – Earlier Community word mark DOLPHIN – Opposition refused in part – Article 8(1)(b) of Regulation (EC) No 207/2009

Judges:

N. J. Forwood, P

Citations:

T-361/11, [2012] EUECJ T-361/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463228

Caixa Geral De Depositos v OHMI – Caixa D’Estalvis I Pensions De Barcelona (‘La Caixa’): ECFI 13 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for Community figurative mark the caixa – Portuguese earlier word mark CAIXA – Earlier national word and figurative marks – No likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation (EC ) No 40/94 [now Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009]

Judges:

J Azizi Rapp, P

Citations:

T-255/09, [2012] EUECJ T-255/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463211

Laboratoire Garnier v OHIM (Natural Beauty): ECFI 11 Jul 2012

ECJ Community trade mark – Application for the Community figurative mark natural beauty – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009

Judges:

L. Truchot, P

Citations:

T-559/10, [2012] EUECJ T-559/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(c)

Jurisdiction:

European

Intellectual Property

Updated: 04 November 2022; Ref: scu.463235

Leifheit v OHMI – Vermop Salmon (Twist System): ECFI 12 Jul 2012

ECFI Community trade mark – Invalidity proceedings – Community word mark Twist System – Earlier Community word marks and TWIX TWIXTER – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, b), and article 53, paragraph 1, under a ) of Regulation (EC) No 207/2009

Citations:

T-334/10, [2012] EUECJ T-334/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463237

Pharmazeutische Fabrik Evers v Ohmi – Ozone Laboratories Pharma (Hypochol): ECFI 12 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for Community word mark HYPOCHOL – Earlier national figurative mark HITRECHOL – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009

Citations:

T-517/10, [2012] EUECJ T-517/10

Links:

Bailii

Statutes:

Regulation No 207/2009 8(1)(b)

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463240

Jackson International v OHMI – Royal Shakespeare (Royal Shakespeare) (Community Trade Mark): ECFI 6 Jul 2012

ECFI Community trade mark – Invalidity proceedings – Community word mark ROYAL SHAKESPEARE – Earlier Community word mark RSC-ROYAL SHAKESPEARE COMPANY – Relative grounds for invalidity – Mark with a reputation – Article 53(1)(a) and Article 8(5) of Regulation (EC) No 207/2009 – Likelihood of association – Unfair advantage taken of the distinctive character or the repute of the earlier trade mark

Judges:

J Azizi P

Citations:

T-60/10, [2012] EUECJ T-60/10

Links:

Bailii

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463233

Comercial Losan v OHMI – McDonald’s International Property (Mc. Baby): ECFI 5 Jul 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Mc. Baby – Earlier Community figurative mark Mc Kids. always quality. always fun! – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

Judges:

Dittrich P

Citations:

T-466/09, [2012] EUECJ T-466/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463214

Medi v OHIM (Medi): ECFI 12 Jul 2012

Community trade mark – Application for Community word mark medi – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1, under b) and paragraph 2 of Regulation (EC) No 207/2009

Citations:

T-470/09, [2012] EUECJ T-470/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463239

Deutscher Ring v OHIM (Deutscher Ring Sachversicherungs-Ag): ECFI 5 Jul 2012

ECFI Community trade mark – Application for Community word Deutscher Ring AG Sachversicherungs-mark – Absolute grounds for refusal – Descriptive character – Distinctive character – Article 7, paragraph 1, b) and c) of Regulation (EC) No 207/2009

Judges:

A. Dittrich, P

Citations:

T-209/10, [2012] EUECJ T-209/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463219

Clorox v OHMI – Industrias Alen (Cloralex): ECFI 10 Jul 2012

ECJ Community trade mark – Opposition proceedings – Application for Community word mark CLORALEX – Earlier national word marks CLOROX – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8, paragraph 1 b) of Regulation (EC) No. 207/2009

Citations:

T-135/11, [2012] EUECJ T-135/11

Links:

Bailii

Statutes:

Regulation (EC) No. 207/2009

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463213

Aiello v Ohmi – Cantoni Itc (100% Capri) (Community Trade Mark): ECFI 12 Jul 2012

ECFI Community trade mark – Opposition proceedings – Notification of the opposing party’s pleading before the Board of Appeal – Rules 50(1), 20(2) and 67(1) of Regulation (EC) No 2868/95 – Rights of the defence

Citations:

T-279/09, [2012] EUECJ T-279/09

Links:

Bailii

Statutes:

Regulation (EC) No 2868/95 67(1)

European, Intellectual Property

Updated: 04 November 2022; Ref: scu.463209