Polo Club v EUIPO – Lifestyle Equities (Polo Club Saint-Tropez Haras De Gassin): ECFI 10 Nov 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU figurative mark POLO CLUB SAINT-TROPEZ HARAS DE GASSIN – Earlier EU figurative marks BEVERLY HILLS POLO CLUB – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Production of additional evidence – Discretion conferred by Article 76(2) of Regulation No 207/2009 – Remittal of the case in part to the Opposition Division – Article 64(1) and (2) of Regulation No 207/2009

[2016] EUECJ T-67/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571281

Simba Toys v EUIPO: ECJ 10 Nov 2016

ECJ (Judgment) Appeal – European Union trade mark – Three-dimensional mark in the shape of a cube with surfaces having a grid structure – Application for a declaration of invalidity – Rejection of the application for a declaration of invalidity

ECLI:EU:C:2016:849, [2016] EUECJ C-30/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571285

For Tune v EUIPO – Gastwerk Hotel Hamburg (Fortune): ECFI 8 Nov 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU figurative mark fortune – Earlier German word mark FORTUNE-HOTELS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

T-579/15, [2016] EUECJ T-579/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571274

Ferring Laegemidler v Orifarm A/S: ECJ 10 Nov 2016

ECJ (Judgment) Reference for a preliminary ruling – Trade marks – Directive 2008/95/EC – Article 7(2) – Medicinal products – Parallel import – Partitioning of the markets – Need for the repackaging of the product bearing the mark – Medicinal product placed on the exporting market and importing market by the trade mark proprietor with the same kind of packaging

ECLI:EU:C:2016:857, [2016] EUECJ C-297/15
Bailii
Directive 2008/95/EC 7(2)
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571273

Smarter Travel Media v EUIPO (Smarter Travel): ECFI 9 Nov 2016

ECJ (Judgment) EU trade mark – Application for the figurative EU trade mark SMARTER TRAVEL – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (c) and Article 7(2) of Regulation (EC) No 207/2009 – Equal treatment

ECLI:EU:T:2016:651, [2016] EUECJ T-290/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571286

Unicorn v EUIPO – Mercilink Equipment Leasing (Unicorn) T-125/15: ECFI 28 Oct 2016

(Judgment) EU trade mark – Opposition proceedings – Application for the EU figurative mark UNICORN – Earlier national word and figurative marks UNICORN and earlier national figurative mark representing a unicorn’s head – Relative ground for refusal – Reputation – Article 8(5) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:640, [2016] EUECJ T-125/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571259

BSH v EUIPO: ECJ 8 Nov 2016

ECJ (Judgment) Appeal – EU trade mark – Application for registration of a figurative mark including the word elements ‘compressor technology’ – Opposition of the proprietor of the word marks KOMPRESSOR PLUS and KOMPRESSOR – Partial refusal of registration – Regulation (EC) No 207/2009 – Article 60 -Regulation (EC) No 216/96 – Article 8(3) – ‘Ancillary’ appeal – Regulation (EC) No 40/94 – Article 8(1)(b) – Weak distinctive character of the earlier national marks – Likelihood of confusion

ECLI:EU:C:2016:837, [2016] EUECJ C-43/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571264

Spa Monopole v EUIPO – YTL Hotels and Properties (Spa Village): ECFI 27 Oct 2016

(Judgment) Brand of the European Union – Opposition proceedings – verbal EU mark SPA VILLAGE – Brand earlier word Benelux SPA – Relative ground for refusal – Article 8, paragraph 5 of Regulation (EC) No 207 / 2009

ECLI:EU:T:2016:631, [2016] EUECJ T-625/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571255

Tayto Group v EUIPO: ECJ 27 Oct 2016

ECJ (Order) Appeal – Article 181 of the Rules of Procedure of the Court – EU trade mark – Opposition proceedings – Application for registration of the figurative mark REAL HAND COOKED – Rejection of the application for registration

C-272/16, [2016] EUECJ C-272/16 – CO
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571256

Unicorn v EUIPO – Mercilink Equipment Leasing (Unicorn) T-201/15: ECFI 28 Oct 2016

ECJ (Judgment) EU trade mark – Invalidity proceedings – EU word mark UNICORN – Earlier national word and figurative marks UNICORN – Article 53(1)(a) and Article 8(5) of Regulation (EC) No 207/2009 – Reputation

ECLI:EU:T:2016:639, [2016] EUECJ T-201/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571260

Unicorn v EUIPO – Mercilink Equipment Leasing (Unicorn) T-124/15: ECFI 28 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU figurative mark UNICORN – Earlier national word and figurative marks UNICORN and earlier national figurative mark representing a unicorn’s head – Relative ground for refusal – Reputation – Article 8(5) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:641, [2016] EUECJ T-124/15
Bailii
Regulation (EC) No 207/2009
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571258

Unicorn v EUIPO – Mercilink Equipment Leasing (Unicorn-Cerpaci Stanice): ECFI 28 Oct 2016

(Judgment) EU trade mark – Opposition proceedings – Application for the EU word mark UNICORN-cerpaci stanice – Earlier national word and figurative marks UNICORN – Relative ground for refusal – Reputation – Article 8(5) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:642, [2016] EUECJ T-123/15
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571261

Caffe Nero Group v EUIPO (Caffe Nero): ECFI 27 Oct 2016

ECJ (Judgment) EU trade mark – Application for the EU figurative mark CAFFE NERO – Absolute grounds for refusal – No distinctive character – Descriptiveness – Mark of such a nature as to deceive the public – Article 7(1)(b), (c) and (g) of Regulation (EC) No 207/2009

T-37/16, [2016] EUECJ T-37/16, ECLI:EU:T:2016:634
Bailii
European

Intellectual Property

Updated: 25 January 2022; Ref: scu.571242

The Football Association Premier League Ltd v Luxton: CA 9 Nov 2016

The defendant pub owner appealed against judgment given for copyright infringement. He had been relaying externally sourced TV of football matches. The images included the claimant’s logo, for which judgment was given. The defendant appealed under European law.
Held: The agreements under which the programme rights were distributed did not breach EU law. The appeal failed.

Tomlinson, Floyd LJJ
[2016] EWCA Civ 1097
Bailii
TFEU 56 101
England and Wales

Intellectual Property, European

Updated: 25 January 2022; Ref: scu.571223

Napp Pharmaceutical Holdings Limited v Dr Reddys Laboratories (UK) Ltd and Another: CA 1 Nov 2016

The appellants had alleged the threat of the respondents to market a product which would infringe their patent. Arnold J concluded that there would be no infringement by either respondent if this marketing occurred and dismissed the various claims.

Patten,Gloster, Floyd LJJ
[2016] EWCA Civ 1053
Bailii
England and Wales

Intellectual Property

Updated: 24 January 2022; Ref: scu.570648

Westermann Lernspielverlage v EUIPO: ECJ 26 Oct 2016

ECJ Judgment – Appeal – EU trade mark application – Figurative mark containing the word elements ‘bambino’ and ‘luk’ – Opposition proceedings – Earlier EU figurative mark containing the word element ‘bambino’ – Partial refusal of registration – Revocation of the earlier mark on which the opposition was based – Letter from the applicant informing the General Court of that revocation – Refusal of the General Court to add that letter to the case file – Failure to state reasons

ECLI:EU:C:2016:805, [2016] EUECJ C-482/15
Bailii
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570592

Sony Communications International Ab v SSH Communications Security Corporation: PatC 10 Oct 2016

Action concerning infringement and validity of a European Patent owned by SSH. Sony commenced the action, seeking revocation, in response to which, SSH put forward three sets of conditional amendments and counterclaimed for infringement in respect of a number of mobile phones sold by Sony. Sony denies infringement and objects to the amendments.

Roger Wyand QC
[2016] EWHC 2584 (Pat)
Bailii
England and Wales

Intellectual Property

Updated: 24 January 2022; Ref: scu.570520

Monster Energy v EUIPO – Hot-Can (Hotogo Self-Heating Can Technology): ECFI 20 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for an EU figurative mark HotoGo self-heating can technology – Earlier EU figurative marks representing claws – Relative grounds for refusal – No similarity of the signs – No likelihood of confusion – No connection between the signs – Article 8(1)(b) and (5) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:624, [2016] EUECJ T-407/15
Bailii
Regulation (EC) No 207/2009
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570373

Lufthansa Airplus Servicekarten v EUIPO – Mareea Comtur (Airpass.Ro): ECFI 20 Oct 2016

EAT (Judgment) EU trade mark – Opposition proceedings – Application for EU figurative mark airpass.ro – Earlier EU word mark AirPlus International – Opposition dismissed – Rule 21 of Regulation (EC) No 2865/95 – No need to adjudicate – Article 81(4) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:622, [2016] EUECJ T-14/15
Bailii
Regulation (EC) No 2865/95 21, Regulation (EC) No 207/2009 81(4)
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570372

Montis Design v Goossens Meubelen BV: ECJ 20 Oct 2016

ECJ (Judgment) Reference for a preliminary ruling – Industrial and commercial property – Copyright and related rights – Directive 93/98/EEC – Article 10(2) – Term of protection – No revival of protection due to Berne Convention

ECLI:EU:C:2016:790, [2016] EUECJ C-169/15
Bailii
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570374

Clover Canyon v EUIPO – Kaipa Sportswear (Clover Canyon): ECFI 20 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark CLOVER CANYON – Earlier national word mark CANYON – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 – Likelihood of confusion

ECLI:EU:T:2016:620, [2016] EUECJ T-693/15
Bailii
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570367

AMS Neve Ltd and Others v Heritage Audio Sl and Another: IPEC 18 Oct 2016

Application by the defendants pursuant to CPR Part 11 for a declaration that the English courts do not have jurisdiction to try the claim. The claim is for infringement of three trade marks and for passing off.

Hacon HJJ
[2016] EWHC 2563 (IPEC)
Bailii
England and Wales

Intellectual Property

Updated: 24 January 2022; Ref: scu.570163

Perry Ellis International Group v EUIPO – CG (P): ECFI 11 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for EU figurative mark likely to be perceived as the letter ‘p’ – Earlier EU and national figurative marks P PROTECTIVE and P – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:602, [2016] EUECJ T-350/15
Bailii
Regulation (EC) No 207/2009 8(1)(b)
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570142

Raimund Schmitt Verpachtungsgesellschaft V EUIPO (Brauwelt): ECFI 18 Oct 2016

(Judgment) EU trade mark – Application for European Union word mark BRAUWELT – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 – Distinctive character acquired through use – Article 7(3) of Regulation No 207/2009 – Right to be heard – Obligation to state reasons – Article 75 of Regulation No 207/2009

T-56/15, [2016] EUECJ T-56/15
Bailii
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570144

Guccio Gucci v EUIPO – Guess? IP Holder (Representation De Quatre G Entrelaces): ECFI 11 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – International registration designating the European Union – Application for an EU figurative mark representing four interlocking Gs – Earlier EU and international figurative marks G – Relative ground for refusal – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:604, [2016] EUECJ T-753/15
Bailii
European

Intellectual Property

Updated: 24 January 2022; Ref: scu.570132

Meter-Tech Llc and Another v British Gas Trading Ltd: PatC 16 Sep 2016

Action for revocation and alleged infringement of UK Patent concerning so-called ‘smart meters’. It is, in substance, about whether British Gas should pay the claimants, in which term I include Vanclare SE LLC, ‘Vanclare’, the proprietor of the Patent) royalties in respect of BG’s past, current and proposed smart meter systems.

Daniel Alexander QC
[2016] EWHC 2278 (Pat)
Bailii
England and Wales

Intellectual Property

Updated: 24 January 2022; Ref: scu.570123

F Hoffmann-La Roche AG v Accord Healthcare OU: ECJ 5 Oct 2016

ECJ (Judgment) Reference for a preliminary ruling – Industrial and commercial property – Patent – Supplementary protection certificate – Regulation (EC) No 469/2009 – Article 21(2) – Transitional provisions – Certificate granted in accordance with the national legislation of a Member State prior to its accession to the European Union – Interpretation of Article 21(2) – Duration of validity of the certificate – Validity of Article 21(2) – Adjustment to secondary legislation resulting directly from the Act of Accession – Lack of jurisdiction of the Court

C-572/15, [2016] EUECJ C-572/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569908

Alpex Pharma v EUIPO – Astex Pharmaceuticals (Astex): ECFI 30 Sep 2016

No real use of Earlier mark

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for EU word mark ASTEX – Earlier EU word mark ALPEX – No genuine use of the earlier mark – Article 42(2) of Regulation (EC) No 207/2009 – Article 75 of Regulation No 207/2009 – Article 76(1) of Regulation No 207/2009

M. van der Woude, P
T-355/15, [2016] EUECJ T-355/15, ECLI:EU:T:2016:591
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569900

Lidl Stiftung v EUIPO – Horno Del Espinar (Castello): ECFI 4 Oct 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU word mark Castello – Earlier national and EU figurative marks Castello – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:594, [2016] EUECJ T-549/14
Bailii
Regulation (EC) No 207/2009
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569910

Universal Protein Supplements v EUIPO (Representation D’Un Culturiste): ECFI 29 Sep 2016

ECJ (Judgment) EU trade mark – Application for registration of an EU figurative mark representing a body-builder – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009

T-335/15, [2016] EUECJ T-335/15
Bailii
Regulation (EC) No 207/2009 7(1)(c)
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569644

Satkirit Holdings v EUIPO – Advanced Mailing Solutions (Luvoworld): ECFI 27 Sep 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU word mark luvoworld – Earlier EU work mark luvo – Relative ground for refusal – Likelihood of confusion – Similarity of the goods and services – Article 8(1)(b) of Regulation (EC) No 207/2009

T-450/15, [2016] EUECJ T-450/15, ECLI:EU:T:2016:543
Bailii
Regulation (EC) No 207/2009 8(1)(b)
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569642

Kozmetika Afrodita v EUIPO – Nunez Martin (Kozmetika Afrodita): ECFI 28 Sep 2016

ECJ Judgment – brand of the European Union – Opposition proceedings – Application for figurative mark of the European Union Kozmetika AFRODITA – Earlier word National brands EXOTIC MUSK OIL AFRODITA MYSTIC Earlier figurative and MUSK OIL AFRODITA MYSTIC – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

T-574/15, [2016] EUECJ T-574/15
Bailii
European

Intellectual Property

Updated: 23 January 2022; Ref: scu.569636

Intesa Sanpaolo v EUIPO (Wave 2 Pay): ECFI 28 Sep 2016

ECJ (Judgment) Brand of the European Union – Request marks the verbal EU WAVE 2 WAVE TO PAY and PAY – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Article 7, paragraph 1 b) and c) and paragraph 2 of Regulation (EC) No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009

T-129/15, [2016] EUECJ T-129/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569634

Llr-G5 v EUIPO – Glycan Finance (Silicium Organique G5 Llr-G5): ECFI 28 Sep 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for EU word mark CITRUS SATURDAY – Earlier national word mark CITRUS – Late submission of documents – Discretion conferred by Article 76(2) of Regulation (EC) No 207/2009 – Rule 19 and Rule 20(1) of Regulation (EC) No 2868/95)

ECLI:EU:T:2016:569, [2016] EUECJ T-539/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569639

Kozmetika Afrodita v EUIPO – Nunez Martin and Machado Montesinos (Afrodita Cosmetics): ECFI 28 Sep 2016

ECJ Judgment – Brand of the European Union – Opposition proceedings – Application for figurative mark of the European Union AFRODITA COSMETICS – Earlier word National brands EXOTIC MUSK OIL AFRODITA MYSTIC Earlier figurative and MUSK OIL AFRODITA MYSTIC – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009

T-575/15, [2016] EUECJ T-575/15
Bailii
Regulation (EC) No 207/2009
European

Intellectual Property

Updated: 23 January 2022; Ref: scu.569637

Satkirit Holdings v EUIPO – Advanced Mailing Solutions (Luvo): ECFI 27 Sep 2016

lipECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU word mark luvo – Earlier EU work mark luvo – Relative ground for refusal – Likelihood of confusion – Similarity of the goods and services – Article 8(1)(b) of Regulation (EC) No 207/2009

T-449/15, [2016] EUECJ T-449/15, ECLI:EU:T:2016:544
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569641

Bach Flower Remedies v EUIPO – Durapharma (Rescue): ECFI 29 Sep 2016

ECJ (Judgment) EU trade mark – Invalidity proceedings – EU word mark RESCUE – Absolute ground for refusal – Descriptive character – No distinctive character acquired through use – Article 7(1)(c) and (3) of Regulation (EC) No 207/2009 – Article 52(2) of Regulation No 207/2009

T-337/15, [2016] EUECJ T-337/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569631

Lacamanda Group v EUIPO – Woolley (Henley): ECFI 28 Sep 2016

(Judgment) EU trade mark – Invalidity proceedings – EU word mark HENLEY – Earlier United Kingdom and EU word marks HENLEYS – Article 8(5) of Regulation (EC) No 207/2009 – Taking unfair advantage of the distinctive character or the repute of the earlier mark

T-362/15, [2016] EUECJ T-362/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569638

European Food v EUIPO – Societe Des Produits Nestle (Fitness): ECFI 28 Sep 2016

ECJ (Judgment) EU trade mark – Invalidity proceedings – EU word mark FITNESS – Absolute grounds for refusal – No distinctive character – Descriptive character – Article 7(1)(b) and (c), Article 52(1)(a) and Article 76 of Regulation (EC) No 207/2009 – Rule 37(b)(iv) and Rule 50(1) of Regulation (EC) No 2868/95 – Production of evidence for the first time before the Board of Appeal

T-476/15, [2016] EUECJ T-476/15, ECLI:EU:T:2016:568
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569633

The Art Company B and S v EUIPO – G-Star Raw (The Art of Raw): ECFI 28 Sep 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for EU word mark THE ART OF RAW – Earlier national and EU figurative marks art and earlier EU figurative mark The Art Company – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

T-593/15, [2016] EUECJ T-593/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569630

Sun Cali v EUIPO – Abercrombie and Fitch Europe (Sun Cali): ECFI 22 Sep 2016

ECJ (Judgment) EU trade mark – Invalidity proceedings – EU figurative mark SUN CALI – Earlier national figurative mark CaLi co – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 – Representation before the Board of Appeal – Real and effective industrial or commercial establishment in the European Union – Legal persons with economic connections – Article 92(3) of Regulation No 207/2009

ECLI:EU:T:2016:527, [2016] EUECJ T-512/15
Bailii
European

Intellectual Property

Updated: 23 January 2022; Ref: scu.569522

Excalibur City v EUIPO – Ferrero (Merlin’s Kinderwelt) T-565/15: ECFI 20 Sep 2016

ECJ (Judgment) EU trade mark – Opposition proceedings – Application for the EU word mark MERLIN’S KINDERWELT – Earlier national word mark KINDER – Relative ground for refusal – No similarity between the signs – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009

ECLI:EU:T:2016:518, [2016] EUECJ T-565/15
Bailii
European

European, Intellectual Property

Updated: 23 January 2022; Ref: scu.569506

Sogepi Consulting (Trade Marks And Designs) (OHIM): ECFI 13 Sep 2012

ECJ Community trade mark – Community word mark request espetec – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – No distinctive character acquired through use – Article 7, paragraph 1 b) and c) and paragraph 3 of Regulation (EC) No 207/2009

T-72/11, [2012] EUECJ T-72/11, ECLI:EU:T:2012:424
Bailii
European

Intellectual Property

Updated: 23 January 2022; Ref: scu.569426

Gedeon Richter Plc v Bayer Schering Pharma Ag: PatC 17 Mar 2011

Where the pattern of the research programme which the notional skilled person would undertake can clearly be foreseen, it may be legitimate to take a step by step analysis. Floyd J said: ‘I think that the guiding principle must be that one has to look at each putative step which the skilled person is required to take and decide whether it was obvious. Even then one has to step back and ask an overall question as to whether the step by step analysis, performed after the event, may not in fact prove to be unrealistic or driven by hindsight.’

Floyd J
[2011] EWHC 583 (Pat)
Bailii
England and Wales
Cited by:
CitedActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.430656

Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc: HL 26 Oct 1995

A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not require that one should be aware that one is infringing: ‘whether or not a person is working [an] . . invention is an objective fact independent of what he knows or thinks about what he is doing . .’ Decisions of the Boards of Appeal on provisions of the UK Act intended to implement corresponding provisions of the EPC have ‘great persuasive authority’.
Lord Hoffmann observed that liability under section 60 is absolute. ‘It depends upon whether the act in question falls within the claims and pays no attention to the alleged infringer’s state of mind.’

Lord Hoffmann, Lord Jauncey of Tullichettle, Lord Browne-Wilkinson, Lord Mustill, Lord Lloyd of Berwick
Times 27-Oct-1995, Gazette 15-Dec-1995, [1996] RPC 76, (1996) 19(1) IPD 19004, (1997) 33 BMLR 201, [1995] UKHL 14
Bailii
Patents Act 1977 3 60
England and Wales
Citing:
CitedPLG Research Ltd and Another v Ardon International Ltd and Others ChD 25-Nov-1994
A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. . .

Cited by:
CitedKirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
CitedSynthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
CitedAerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
CitedSymbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
CitedWarner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another SC 14-Nov-2018
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four . .
CitedActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 23 January 2022; Ref: scu.83664

Actavis Group Ptc EHF and Another v Teva UK Ltd and Others: CA 1 Nov 2017

These appeals are concerned with the validity and infringement of a patent concerning tadalafil.

Lewison, Kitchin, Floyd LJJ
[2017] EWCA Civ 1671, 159 BMLR 108
Bailii
England and Wales
Cited by:
At CAActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.598470

Eli Lilly v Actavis UK Ltd and Others: SC 12 Jul 2017

The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and Spain.
Held: Eli Lilly’s appeal succeeded. The Actavis products directly infringed the respondent’s patents. The Court would: ‘(i) allow Lilly’s appeal in direct infringement and hold that the Actavis products infringe the Patent in the United Kingdom, and also in France, Italy and Spain, (ii) dismiss Actavis’s cross-appeal on the basis that if its products did not directly infringe, they would indirectly infringe to the extent held by the Court of Appeal.’
Lord Neuberger said: ‘Any patent system must strike a balance between the two competing factors referred to at the end of article 1 of the Protocol, namely ‘a fair protection for the patent proprietor [and] a reasonable degree of legal certainty for third parties’. The balance cannot be struck on an ad hoc case-by-case basis without any guiding principles, as that would mean that there was no legal certainty. On the other hand, striking the balance by adopting a normal approach to interpretation would risk depriving patentees of a proper measure of protection’
‘notwithstanding what Lord Diplock said in Catnic [1982] RPC 183, 242, a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is ‘yes’, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention.’
Lord Neuberger reformulated the three Improver questions as follows:
‘1 Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
2 Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

Lord Neuberger, Lord Mance, Lord Clarke, Lord Sumption, Lord Hodge
[2017] UKSC 48, [2017] RPC 21, [2017] Bus LR 1731, UKSC 2015/0197
Bailii, Bailii Summary, SC, SC Summary, SC Videos Summary, SC 170404 am Video, SC 170404 pm Video, SC 170405am Video, SC 170405pm Video, SC 170406am Video, SC 170406pm Video
Patents Act 1977 60(1)
England and Wales
Citing:
At First InstanceActavis UK Ltd and Others v Eli Lilly and Company PatC 15-May-2014
The defendants owned a cancer treatment drugs patent which had been extended. The various claimants wished to introduce a generic version, and sought a declaration of invalidity of the patent.
Held: None of the Actavis products would directly . .
Appeal fromActavis UK Ltd and Others v Eli Lilly and Company CA 25-Jun-2015
Lilly appealed against a finding that an Actavis drug had not infringed its patents to the limited extent of holding that there would be indirect infringement in four jurisdictions, but they agreed with the Judge that there would be no direct . .
See AlsoActavis UK Ltd and Others v Eli Lilly and Company PatC 12-Nov-2015
application by Actavis for judgment on admissions seeking a declaration. . .
CitedRanbaxy (Uk) Ltd v Astrazeneca Ab PatC 15-Jul-2011
Ranbaxy, an importer of generic pharmaceuticals, sought a declaration of non infringement and revocation of EP 1 020 461 owned by AstraZeneca. AstraZeneca counterclaimed for infringement.
Kitchin J discussed the prohibition from patentability . .
LeaveActavis UK Ltd and Others v Eli Lilly and Company CA 30-Jun-2015
Consideration of
i) The form of order for costs of the trial and the appeal;
ii) What should happen to the interim payment made by Lilly in the court below, and whether there should be an interim payment of any costs awarded under . .
CitedCatnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .
ReformulatedImprover Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
CitedWheatley and Another v Drillsafe Ltd and Others CA 5-Jul-2000
Appeal against declaration of patent invalidity. . .
CitedSchutz (UK) Ltd v Werit (UK) Ltd SC 13-Mar-2013
The parties disputed whether there had been an infringement of the claimant’s patent in respect for ‘intermediate bulk containers’ designed for the safe transport of liquids in bulk. They were a cage holding a plastic bottle. The defendant had a . .
CitedKirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
CitedGraver Tank and Manufacturing Co Inc v Linde Air Products Co 29-May-1950
(United States Supreme Court) Jackson J discussed the doctrine of equivalents so as to prevent ‘the unscrupulous copyist [from making] unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be . .
CitedWalton v Potter and Horsfall 18-Nov-1841
Tindal CJ told the jury that they had to decide whether the defendant’s product was ‘perfectly distinct’ from the patented product, or whether it varied ‘only in certain circumstances, which are not material to the principle and substance of the . .
CitedClark v Adie HL 1877
The court should look to the ‘pith and marrow’ of the invention to see whether a patent infringement had occurred. For a claim be made for a ‘subordinate’ invention, it would have been necessary distinctly to claim it in the patent. . .
CitedBeecham Group Ltd v Bristol Laboratories Ltd HL 1977
An allegation was made of infringement of a patent on ambicillin. The ‘pith and marrow’ approach resulted in the marketing of hetacillin, which was a reproduction of the substance ampicillin, albeit temporarily masked, constituting an infringement . .
CitedNorton Healthcare Limited v Beecham Group Plc CA 19-Jun-1997
. .

Cited by:
CitedActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.589260

Actavis and Others v Eli Lilly and Company: PatC 10 Aug 2016

Patents relating to tadalafil

[2016] EWHC 1955 (Pat)
Bailii
England and Wales
Cited by:
At First InstanceActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.568933

Victor International v EUIPO – Ovejero Jimenez And Becerra Guibert (Victor): ECFI 7 Sep 2016

ECJ Judgment – EU trade mark – Opposition proceedings – Application for the EU word mark VICTOR – Earlier national figurative mark victoria – Relative ground for refusal – Genuine use of the earlier mark – Nature of the use – Form differing in elements which do not alter the distinctive character – Article 15(1) and Article 42(2) and (3) of Regulation (EC) No 207/2009 – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009

T-204/14, [2016] EUECJ T-204/14, ECLI:EU:T:2016:448
Bailii

European, Intellectual Property

Updated: 22 January 2022; Ref: scu.569047

Boehringer Ingelheim KG v Swingward Ltd: ECJ 26 Apr 2007

ECJ (Free Movement of Goods) Industrial and commercial property – Trade mark rights – Pharmaceutical products – Parallel imports – Repackaging of the product bearing the trade mark.

C.W.A. Timmermans, P
[2007] ECR I-3391, [2007] Bus LR 1100, [2007] EUECJ C-348/04
Bailii
Citing:
See alsoBoehringer Ingelheim KG v Swingward Ltd ECJ 6-Apr-2006
Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 22 January 2022; Ref: scu.569033

Beiersdorf v EUIPO (Q10): ECFI 7 Sep 2016

ECJ- (Judgment) Mark of the European Union – Application for figurative mark of the European Union Q10 – Refusal to register a declaration on the scope of protection – Article 37, paragraph 2 of Regulation (EC) No 207 / 2009 – absolute grounds for refusal – descriptive character – Lack of distinctive character – Article 7, paragraph 1 b) and c) of Regulation No 207/2009

[2016] EUECJ T-4/15
Bailii

European, Intellectual Property

Updated: 22 January 2022; Ref: scu.569040

Tsujimoto v Kenzo: ECJ 21 Jul 2016

(Order) Appeal – Article 181 of the Rules of Procedure of the Court of Justice – Community word mark – Word mark KENZO ESTATE – Earlier Community word mark KENZO – Relative ground for refusal – Reputation – Regulation (EC) No 207/2009 – Article 8(5) – Partial rejection of the opposition

C-87/16, [2016] EUECJ C-87/16 – CO, ECLI:EU:C:2016:592
Bailii

European, Intellectual Property

Updated: 22 January 2022; Ref: scu.569009

Fearns (T/A Autopaint International) v Anglo-Dutch Paint and Chemical Company Ltd and Others: ChD 9 Jul 2010

After judgment finding trade mark infringement, the court now considered the damages to be awarded: ‘The central issue in the enquiry is whether the Defendants’ unlawful acts as found in the Liability Judgment not only deprived Mr Fearns of profits but also caused the collapse of his business.’

Leggatt QC HHJ
[2010] EWHC 1708 (Ch)
Bailii
England and Wales

Intellectual Property, Damages

Updated: 22 January 2022; Ref: scu.568561

Mothercare UK Ltd v Penguin Books: CA 1988

The Trade Marks Act would only be concerned to restrict the use of a mark as a trade mark or in a trade mark sense, and should be construed accordingly. If descriptive words are legitimately registered [as a trade mark], there is still no reason why other people should not be free to use the words in a descriptive sense, and not in any trade mark sense.

Dillon LJ
[1988] RPC 113
Trade Marks Act 1994
England and Wales
Cited by:
CitedRegina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
DistinguishedBravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd SCS 1996
The petitioner was the proprietor of the trade mark Wet Wet Wet (the name of a popular music group). It was registered for (among other classes of goods) books. The defendant intended to publish a book about the group using ‘Wet Wet Wet’ as part of . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 22 January 2022; Ref: scu.182484

Realchemie Nederland v Bayer Cropscience Ag: ECJ 18 Oct 2011

ECJ Regulation (EC) No 44/2001 – Jurisdiction and recognition and enforcement of judgments – Definition of ‘civil and commercial matters’ – Recognition and enforcement of an order imposing a fine – Directive 2004/48/EC – Intellectual property rights – Infringement of those rights – Measures, procedures and remedies – Sentence – Exequatur procedure – Related legal costs

[2011] EUECJ C-406/09, [2012] Bus LR 1825, ECLI:EU:C:2011:668
Bailii
Regulation (EC) No 44/2001, Directive 2004/48/EC
Citing:
OpinionRealchemie Nederland v Bayer Cropscience Ag ECJ 5-Apr-2011
ECJ (Area Of Freedom, Security And Justice) Jurisdiction and Enforcement – Definition of ‘civil and commercial matters – Recognition and enforcement of a decision imposing a fine calendar – Directive 2004/48/EC – . .

Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 21 January 2022; Ref: scu.568161