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Intellectual Property Matters – November 2014

Intellectual Property Matters – November 2014

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18/11/2014

Design prior art must be visible

Under Article 4(2)(a) of the Community Designs Regulation [1], a design applied to or incorporated […]

Under Article 4(2)(a) of the Community Designs Regulation [1], a design applied to or incorporated in a component part of a complex product is considered to be new and to have individual character – and therefore to be capable of registration – only if the component part remains visible during normal use. As we noted in our last newsletter, the concept of “normal use” is only relevant to complex products.

The design in issue in Cezar v OHIM [2] was for a skirting board duct. The OHIM Board of Appeal had previously held that the design lacked novelty and individual character over an earlier design. However, the earlier duct was concealed behind a skirting board when in normal use.

The EU General Court allowed the appeal on the basis that the OHIM Board of Appeal had wrongly considered the prior art to be visible during normal use. The earlier design was part of a complex product and was invisible during the normal use of the product.

The General Court held that, since a design constituting a component part of a complex product which is not visible during normal use of that complex product cannot be protected under the Community Designs Regulation, it followed, by analogy, that the novelty and individual character of a Community design cannot be assessed by comparing that design with an earlier design which, as a component part of a complex product, is not visible during the normal use of that product.

This case is a logical extension of the existing law on visibility of designs as a part of a complex product.

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[1] 6/2002/EC
[2] Case T-39/13

Glee for GLEE: remedies in the trade mark infringement case

Earlier in the year we reported on the trade mark infringement case involving the well-known […]

Earlier in the year we reported on the trade mark infringement case involving the well-known US TV series, “glee”. In Comic Enterprises v Twentieth Century Fox Film, the High Court ruled that the TV show infringed the figurative mark of a UK comedy club which incorporated the words “the glee Club”. The High Court has now awarded remedies [1].

The claimant sought the following remedies:

final injunction against further infringement
delivery up of infringing physical and digital copies of the TV series
an account of profits attributable to the infringement
an order requiring the defendant to make a public statement on the outcome of the case
an interim payment on account of damages or profits.

The defendant argued that to grant the remedy of a final injunction would have a disproportionate effect on its business as many of the show’s fans would stop following the show if it was no longer called “Glee”. There would also be a significant re-branding, including re-mastering copies of past series. The Deputy High Court Judge considered that it would be fair to grant an injunction against future infringement, saying that the costs of re-branding would not be as substantial as the defendant alleged. He also said that he would frame the injunction in such a way that the defendant would be able to refer to the fact that the show had previously been called “Glee”.

The Judge also ordered delivery up of the copies of the programme. As the claimant did not seek delivery up of copies that were in the hands of third parties, the order extended only to those in the defendant’s possession or under its control. The Judge suggested that the difficulty and cost of delivery up had been overestimated by the defendant, and that such an order would be proportionate.

As regards an account of profits, the defendant argued that, because it had acted innocently and the claimant had delayed for two years before issuing proceedings, it would be inappropriate to make such an order. The claimant, in the alternative, argued that the defendant should have conducted trade mark searches in the UK before launching the TV show. Although the Judge was not willing to accept the claimant’s argument (given that the defendant was a large US company whose main audience was in America), he noted that it was appropriate to delay commencing proceedings until the claimant had had sufficient time to make an assessment of whether there was an impact on its business. The Judge considered that it should be possible to assess the contribution that the “Glee” name made to the overall success of the show and that, unless that contribution turned out to be negligible, an account of profits should be allowed.

The litigation had not attracted particularly high levels of press coverage and it was not unreasonable in the circumstances to grant a publicity order.

The Judge was reluctant to award much in the way of an account of profits or damages in view of the difficulty in assessing the amount that would ultimately be payable to the claimant. He therefore awarded the “extremely conservative” sum of £100,000.

Whilst the Judge was prepared to stay the injunction pending the defendant’s appeal, he would not stay the publicity order, as it was important that further damage to the claimant’s mark be minimised.

This David and Goliath battle rages on as both parties prepare for the defendant’s appeal, and we will be keeping a close eye on the developments.

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[1] [2014] EWHC 2286 (Ch)

Has social media moved the goalposts on sharing Premier League clips?

The media have reported that the Premier League is intending to clamp down on the […]

The media have reported that the Premier League is intending to clamp down on the unauthorised uploading of clips from televised football matches. This is in response to a rapid increase in the volume of uploads by fans of short video clips, typically goals, often within seconds of the goal being scored. The Premier League has warned fans that this is a breach of copyright.

Is there a breach of copyright?

The leading case in this area is the European Court of Justice ruling on the use of digital decoders, which was a decision made in the context of the use by UK-based publicans of foreign decoders to broadcast Premier League matches [1]. In that case, the Court of Justice ruled that live sporting events do not of themselves qualify for copyright protection but that aspects of the broadcast, such as opening sequence, theme tune and pre-recorded highlights might do. This means that it is certainly possible that posting online clips of goals taken from broadcasts could constitute copyright infringement.

In the UK, copyright can only be infringed if the unauthorised use of the material involves the whole or a “substantial part” of the copyright work. However, a substantial part can refer to quality as well as quantity and important incidents in a match, like a goal, a sending off or missed penalty, could be deemed to be “substantial” for these purposes.

Is there an available defence to copyright infringement?

The first possibly applicable copyright exception is that which allows copyright material to be used without the rights holder’s permission for the purpose of reporting current events. This is subject to the requirement that the use made of the material is “fair dealing”. Taking an excessive amount, or taking small amounts on a regular basis, can render the dealing unfair. Also, to be “fair”, the clip should not include non-newsworthy material (a substitution perhaps?). It is also necessary for the event in question to be current (so games from last season would not be covered, for example).

No doubt the Premier League or other rights holders would argue that, where consumers post material to social media sites, it is not done for the purpose of reporting current events. On the other hand, an increasing number of people nowadays get their news from sites like Twitter rather than from more traditional media; and goals – as the most newsworthy aspect of a game – would probably fall within the exception, if it were held to apply.

A second copyright exception which might apply is the right to quote copyrighted material, which only came into effect on 1 October this year. The fair dealing requirement applies to this defence as well.

It is possible that ultimately the issue of whether uploading clips of matches to social media is copyright infringement will have to be determined by the courts. This issue is important, not just for the rights holders and for fans, but also for the social media platforms which may be faced with the requirement to police their sites in the future for infringing material. The issue is also relevant to News Corporation, as the ultimate owner of The Times and The Sun newspapers, which have secured the online rights to Premier League matches in a deal worth millions of pounds.

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[1] Case C-403/08

No need to cry over spilt milk: summary judgment on patent non-infringement claim

The Court of Appeal has upheld a summary judgment [1] on an application for a […]

The Court of Appeal has upheld a summary judgment [1] on an application for a declaration of non-infringement of patent, showing that it is perfectly possible for non-infringement applications to be dealt with by summary judgment.

The application was for a declaration that a redesigned milk bottle did not infringe an earlier patent incorporating a plastic milk bottle design. The patent owner had brought an action against the defendant, a competitor in the milk bottle design industry, for infringement of the patent. The defendant produced a modified design and sought summary judgment on the declaration of non-infringement, on the basis that it needed commercial certainty.

On the summary judgment application, Birss J accepted that summary judgment was unusual in patent cases. This is because, as Birss J made clear, claim construction and infringement determination generally require expert evidence. In this case, the patent in issue was sufficiently simple; the claims did not use terms of the art; and there was no requirement for expert evidence to be adduced. This meant the court was able to construe the claims itself without the need for expert assistance and to determine that they would not be infringed.

The Court of Appeal agreed with Birss J, rejecting the submission that this was a case which required expert evidence. On a summary judgment application, it was necessary for the party claiming that the court was inadequately equipped to determine claim construction to identify, at least in general terms, the nature of the evidence proposed to be adduced and to explain why that evidence might impact claim construction.

Cases like this, where non-infringement applications are dealt with by summary judgment, will remain the exception rather than the rule but this decision does show that it is possible for non-infringement applications to be ‘mopped up’ quickly.

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[1] Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293

Property developers: don’t delay in filing your trade mark application

An application for registration of the name CANARY WHARF by Canary Wharf Group plc (the […]

An application for registration of the name CANARY WHARF by Canary Wharf Group plc (the Group) as a trade mark has been refused. The application was made in respect of a variety of goods and services, including property development and maintenance services, car parking services, building and landscape design services and security services.

Place names that designate the geographic origins or other characteristics of goods and services are generally not capable of registration as a trade mark in the UK unless the name has become distinctive through use. In this case, the Group argued that CANARY WHARF was the name of a private building development, rather than a place name, and was analogous to other landmark buildings whose names had been registered as trade marks, such as The Shard.

The Hearing Officer disagreed, finding that there were currently 35 buildings in the Canary Wharf area and that the Group was not the freeholder of all of them.

Further, the Group had delayed filing its application for nearly 30 years from the date development started on the Canary Wharf site. In the Hearing Officer’s words: “This has allowed some thirty years of uncontrolled media coverage to, at the very least, render the factual basis of ownership/control obscure as far as the relevant consumer or wider public is concerned”.

Not only is this case a clear reminder of the need for property developers to file trade mark applications at the time of development (or as soon as possible thereafter), we think it’s fair to say that once you have had a Tube stop named after your development, it is probably too late to get the trade mark registered!

Three-dimensional mark for sweet treats devoid of distinctive character

The EU General Court has upheld a decision of the OHIM Board of Appeal that […]

The EU General Court has upheld a decision of the OHIM Board of Appeal that a three-dimensional Community trade mark registered for desserts, ice creams, sorbets and yoghurts lacked distinctive character and had failed to acquire distinctive character through use. The Community Trade Mark Regulation [1] prohibits registration of trade marks which are devoid of distinctive character (Article 7(1)(b)).

In this case [2] the mark consisted of two glass goblet-shaped transparent containers in a cardboard outer casing open at the top and the sides. The mark was the three-dimensional shape of the packaging used for the products.

The key factor in the OHIM decision, upheld by the General Court, was that these were inexpensive everyday consumer products to which a consumer did not display a high level of attention. The mark did not depart significantly from what was standard in the sector and so could not be said to have distinctive character as it lacked any features to differentiate it from the marks of other products in the market for desserts. Whilst it is possible to overcome a lack of distinctiveness by showing evidence of distinctiveness acquired through use, the appellant had failed to do this.

The case is indicative of the difficulty of showing distinctiveness in products to which consumers do not show a high level of attention.

[1] 40/94/EC
[2] Giorgio Giorgis v OHIM, Case T-474/12

UK IPOwer: Office may revoke a patent of its own initiative

From 1 October 2014, the UK Intellectual Property Office (UK IPO) has the power to […]

From 1 October 2014, the UK Intellectual Property Office (UK IPO) has the power to revoke a patent of its own initiative.

The UK IPO already provided a patent opinion service whereby anyone, upon payment of a fee (currently £200), can request an opinion on whether a UK patent (or a UK designation of a European patent) is valid. The opinion is non-binding but it can be a useful tool for resolving disputes without the need for litigation.

Previously, if the UK IPO opinion found that a patent was invalid, it was then up to the third party to institute revocation proceedings. The change from 1 October is that the UK IPO now has the ability to revoke patents, of its own initiative, for lack of novelty or inventive step. This is a potentially powerful tool.

The UK IPO has indicated that it will only revoke a patent in clear-cut cases, although it remains to be seen what “clear-cut” will mean in practice. For the patent holder, there is the opportunity to apply for a review of the opinion before any revocation action is commenced. If revocation does go ahead, the patent holder will be able to appeal to the courts.

If you have any questions relating to the UK IPO’s new patent powers, please feel free to contact us.

Contacts

Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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