Bringing you monthly news of key developments in intellectual property law.
TRADE MARKS
Gateway Inc. v OHIM, ECJ, 11 December 2008
The ECJ has upheld a CFI decision that, on a global assessment of the marks, there was no visual, phonetic or conceptual similarity between the earlier word and figurative marks GATEWAY and the applicant's mark ACTIVY MEDIA GATEWAY, for information technology products and services: the ECJ considered that "activy" was the distinctive and dominant element of the applicant's mark, and "gateway" being descriptive of the goods and services. As such, the ECJ considered that there was no likelihood of confusion (art. 8(1)(b) CTMR) and, as there was no similarity between the marks, the ECJ also rejected the argument under art. 8(5) CTMR, on the basis that it was not necessary to go on to consider whether the GATEWAY marks had a reputation.
For the full text of the decision, click here.
Les Editions Albert René Sarl v OHIM, ECJ, 18 December 2008
The ECJ has rejected an appeal by the owner of the Community trade mark OBELIX to uphold the CFI's decision that there was no likelihood of confusion with the proposed mark MOBILIX. The court held that the CFI had correctly assessed the similarity of the respective goods and services.
For the full text of the decision, click here.
Verein Radetzky-Ordern v Bundesvereinigung Kameradschaft "Feldmarschall Radetzky", ECJ, 9 December 2008
The ECJ has held that use of a registered trade mark by a non-profit-making organisation can constitute "genuine use" for the purpose of defending an application for revocation on the ground of non-use under Article 12 of the Trade Marks Directive.
For the full text of the decision, click here.
The Wellcome Foundation Ltd. v Paranova Pharmzeutika Handels GmbH, ECJ, 22 December 2008
The ECJ made a finding in a pharmaceutical parallel trade case referred by an Austrian court that:
(i) In reviewing repackaging of branded products there is no principle of "minimum intervention", ie. interfering with the original packaging in the minimum way. The sole criterion on which the lawfulness of the new packaging is to be measured is whether it is such as to damage the reputation of the trade mark and its proprietor (assuming that the other criteria relating to repackaging of branded products have been met, as per ECJ case law, set out in Boehringer -v- Swingward 1 and 2).
(ii) It is for the parallel importer to provide to the trade mark owner in its notice the information which is necessary and sufficient to enable the trade mark owner to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation.
For the full text of the decision, click here.
PATENTS
Ratiopharm GmbH v Napp Pharmaceutical Holdings Limited and Sandoz Limited v Napp Pharmaceutical Holdings Limited, 16 December 2008
Floyd J in the High Court found that two patents relating to a slow release pain killer were valid over attacks on added matter (an undisclosed disclaimer did not add to the subject matter of the invention) and obviousness (on the basis of common general knowledge), but that they were not infringed.
For the full text of the decision, click here.
PRACTICE AND PROCEDURE
Company Names Adjudicator issues first decision, 3 December 2008
In its first decision since the new right of complaint came into force on 1 October 2008, the Company Names Adjudicator has made an order against Coke Cola Limited to change its name within one month to one which does not offend section 69 of the Companies Act 2006. The Coca-Cola Company Limited filed an application on the basis that Coke Cola Limited's name was 'sufficiently similar' that it would be likely to mislead when used in the UK by 'suggesting a connection between the company and the applicant'. Since the company was incorporated before the legislation came into effect, the decision also confirms that complaints can be made in relation to companies incorporated prior to 1 October 2008.
For the full text of our Law-Now update, click here.
Animatrix Ltd and others v Jeffrey O'Kelly, Court of Appeal, 16 December 2008
The Court of Appeal has ruled that a judge may make a declaration regarding ownership of IP rights which is based on a settlement agreement previously agreed by the parties. The court said there was a rule of practice that declarations were not granted by consent, but it also said this was not immutable. Instead, a declaration could be granted by consent if that was necessary to do justice to the parties.
For the full text of the decision, click here.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 03/02/2009.