Intellectual Property Matters – September 2015
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A tactic for claimants in patent disputes?
A recent decision of the Patents Court [1] has highlighted how patent disputes can impact […]
A recent decision of the Patents Court [1] has highlighted how patent disputes can impact customers of a manufacturer and/or supplier who is allegedly infringing the patent.
The patent in suit concerned a “method of operating a wind power station” which the patent owner, Wobben, claimed was infringed by the manufacture and supply of competing technology by Siemens. Wobben maintained that Siemens was manufacturing, marketing and supplying wind turbines which incorporated technology that was the subject of the patent.
The other defendants were customers of Siemens and Wobben’s claim against them was that they had used the wind turbines manufactured by Siemens in their wind farms. The companies that had installed the wind turbines for them were also added as defendants.
Wobben had also, earlier in the proceedings, obtained a Norwich Pharmacal order obliging Siemens to provide details of the identity of its customers within the jurisdiction of the court where the technology had been activated, or was to be activated between the date of the hearing and the trial.
Siemens argued that the patent was invalid. Having considered the prior art, the Court considered that the patent in suit was novel but that it lacked inventive step. It considered that the approach taken by Siemens with respect to its own technology was obvious.
The Court went on to find that, even if the patent were valid, it had not been infringed.
The decision was a technical one arrived at after a detailed analysis of expert evidence and the relevant technology. More generally, the interesting aspect of the case is Wobben’s insistence upon joining in customers of Siemens as defendants, and also those responsible for installing the technology, and forcing the disclosure of the identify of customers who had purchased technology from Siemens. The customers in question would be unlikely to thank Siemens for being dragged into a dispute that they would think did not concern them and this could be a useful tactical weapon in patent disputes.
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[1] Wobben Properties v Siemens & Others [2015] EWHC 2114 (Pat)

Geographically descriptive marks
The US Trademark Trial and Appeal Board has ruled than an application for registration of […]
The US Trademark Trial and Appeal Board has ruled than an application for registration of the mark “Montussan” can proceed because, although the mark is a geographic name, the name is of an “obscure location” in France, unknown to US consumers.
The applicant, Montussan Apéritifs, applied for registration of the mark “Montussan” as a US trade mark in respect of alcoholic beverages. Montussan is a small town in France, about 15 kilometres from Bordeaux and with around 3,000 inhabitants.
The application was initially rejected on the grounds that the mark was “geographically descriptive” of the goods in question. The examiner, in reaching his decision, cited extracts from websites like TripAdvisor, as well as Google searches, to show that the name was geographically descriptive. He also cited the town’s close proximity to Bordeaux, a town which was known to US consumers.
The applicant appealed successfully with the Appeal Board ruling that the sum total of the examiner’s evidence was that there was a town called Montussan in France, but that the evidence was silent as to the recognition of Montussan among US consumers. In the words of the Board, “the term Montussan does not convey a readily recognisable geographical significance to the average American consumer, but rather simply denotes the name of an obscure or remote geographic location”.
The case is interesting for showing that there are limits to the geographical descriptiveness ground for refusing an application – if the place name is of a small and obscure town, the application may still succeed.

Yves Saint Laurent and Skinny Love
Yves Saint Laurent has failed in its opposition to the Swiss registration of the mark […]
Yves Saint Laurent has failed in its opposition to the Swiss registration of the mark SL Skinny Love. The two marks are shown here and here and both are in respect of apparel in class 25.
The decision appears surprising. The rationale for it was that Yves Saint Laurent had failed to prove that YSL was a well-known mark for fashion goods, and that a distinction was to be drawn between Yves Saint Laurent, the person (who was well known) and the YSL monogram.
The Court also considered that the applicable case law showed that there would not usually be a likelihood of confusion between acronyms and short (i.e. three letters or fewer) marks. The courts attribute heightened powers of perception to consumers confronted with these types of mark so that the differences between them are exaggerated. There is also a policy reason that short signs should not be granted monopoly powers of protection. In this case, the addition of the words “Skinny Love” beside the SL removed any likelihood of confusion.
Yves Saint Laurent may well feel hard done by in this decision as there does appear to be an argument that consumers will associate the Skinny Love sign with the YSL

Vodka and the likelihood of confusion
The Russian company FKP Sojuzplodoimport and the Dutch company Spirits International have been in dispute […]
The Russian company FKP Sojuzplodoimport and the Dutch company Spirits International have been in dispute for several years regarding the ownership of the vodka trade marks STOLICHNAYA and MOSKOVSKAYA. The Russian company prevailed in proceedings in the Netherlands culminating in an order by the Rotterdam District Court ordering Spirits to transfer its rights in the trade marks to FKP and prohibiting Spirits from infringing the two marks.
In separate proceedings, the Rotterdam District Court refused FKP’s request to invalidate trade mark registrations owned by Spirits in respect of the word and figurative mark STOLI on the basis that there was no likelihood of confusion between those marks and the STOLICHNAYA marks.
The latest dispute between the pair concerned an alleged trade mark infringement by Spirits by reason of its use of the mark STOLI for vodka in the Benelux countries. Spirits stopped selling the Stolichnaya-branded vodka following the ruling of the Rotterdam District Court but began selling vodka in the Benelux countries under the STOLI mark using the logo “Same Vodka. Different Label”. FKP applied for an injunction.
Responding to the application, Spirits argued that:
- the Rotterdam District Court had already ruled that the STOLI and STOLICHNAYA marks were not confusingly similar
- in the assessment of confusion only the words STOLI and STOLICHNAYA should be taken into account as other elements, like the use of the words “premium” and “vodka”, were common practice
- it carried out no acts in the Benelux countries that were reserved for the mark’s proprietor – the vodka was imported directly from Latvia by Spirit’s Benelux distributors.
The District Court found that the marks were confusingly similar. It considered that the relevant public could think that the STOLI mark was a restyle of the STOLICHNAYA label. In addition, FKP had submitted evidence of actual confusion. The Rotterdam District Court had considered other trade marks, not the STOLI mark in issue in this case, and therefore the submission based on the ruling of the Rotterdam Court was irrelevant.
However, given the absence of relevant acts by Spirits in the Benelux, the Court concluded that Spirits had not infringed the STOLICHNAYA mark. The existence of an agreement between Spirits and the distributors allowing it to place Stoli-branded bottles on the Benelux market did not, of itself, constitute an act of infringement. Spirits had, however, facilitated trade mark infringement by its Benelux distributors. The Court emphasised that it was important in this regard that Spirits was the trade mark owner and was aware that infringement when the STOLI mark was used by its distributors.
The finding was not affected by the goodwill that Spirits may have built up during the years in which it was the registered owner of the STOLICHNAYA mark. The Court therefore granted the injunction.

Four copyright disputes in the music industry
We continue to read of copyright disputes in the music industry and this month is no […]
We continue to read of copyright disputes in the music industry and this month is no exception.
The first case comes from China, where Beijing was recently awarded the 2022 Winter Olympics. The Chinese authorities have wasted no time and have reportedly already launched no less than 10 official theme songs. One of these, ‘Bing Xue Wu Dong’ (which translates as ‘The Snow and the Ice Dance’) has unfortunately found itself at the centre of a copyright controversy. It apparently sounds uncomfortably like the song “Let it go” from “Frozen” (which, of course, requires no introduction). The unveiling of the song resulted in a storm of negative criticism on social media with the word “plagiarism” to the fore. We are not aware that Chinese officials have commented but the story is unwelcome for China, which is keen to rid itself of the tag as a haven for counterfeiting and intellectual property rights infringement. It should also be stated that, so far as we are aware, Disney is not claiming copyright infringement.
The second concerns The Great British Bake Off and The Sound of Music, not shows that one would necessarily associate with the sharper edge of the law. The advert for the new series featured presenters Mary Berry and Paul Hollywood dancing on a hillside singing along to a parody of the original song, ‘The Sound of Music’ from the 1965 film of the same name. The Bake Off version is a parody containing lines like “The hills are alive with the smell of baking” and “the hills fill my heart with a love of baking”.
This of course was a parody and there is a statutory parody exception to copyright infringement, introduced as recently as last October. “Parody” is defined in the Oxford English Dictionary as “an amusingly exaggerated imitation of the style of a writer, artist, or genre” and this highlights a problem with the parody exception, namely that what is amusing to one person may not be to another. Certainly, the BBC was not inclined to take chances and at the first whiff of a suggestion of copyright infringement – in the form of a letter from the publishers of the original song (Rodgers and Hammerstein) demanding its withdrawal – it pulled the advert. The BBC denies that the withdrawal of the advert was related to the complaint, saying that it was planning on running other trailers anyway. Either way, its passing is unlikely to be greatly mourned.
The third case concerns the singer, Justin Bieber, adored by teenage girls around the world. In the case of Copeland et al v Bieber et al, the plaintiff, a Devon Copeland, created a song called “Somebody to Love” in 2008. Copeland registered a copyright for the work and then gave a song to a company that recruits artists to promote the work. That company in turn presented the song to the singer Usher. Usher allegedly then gave the song to Bieber who released his own version in 2010. Copeland filed for copyright infringement against Bieber, Usher and others. The defendants sought to dismiss the actions on the basis that no reasonable jury could find that the songs were “substantially similar”, a prerequisite to a finding of copyright infringement. The defendants succeeded before the district court, the court ruling that despite some shared elements, the “mood, tone and subject matter” of the songs differed significantly.
On appeal, the 4th Circuit vacated that decision, finding that the choruses of the songs were such that a jury could find the songs intrinsically similar. The case has therefore been remanded to the district court for further proceedings.
We have previously written on the copyright dispute unfolding in America concerning the song “Happy Birthday to you”. By way of update, the lawyers for the claimant are saying that they have uncovered evidence that the song is even older than the defendant, Warner/Chappell, maintain and that the song was freely available before the work was first copyrighted in 1935. As a result, the claimant is seeking summary judgment. Warner/Chappell’s response is that the new evidence raises issues the resolution of which requires a full trial. We will keep you posted.

Cheerleader uniforms and copyright protection
The US Court of Appeals for the Sixth Circuit has ruled that the fabric designs […]
The US Court of Appeals for the Sixth Circuit has ruled that the fabric designs of cheerleader uniforms produced by Varsity Brands were conceptually separable from the utilitarian function of a cheerleading uniform.
Varsity Brands had sued a clothing company, Star Athletica, for copyright infringement, claiming that the cheerleader uniforms sold by Star Athletica were substantially similar to its own. The claim was refused by the District Court which held that the Varsity designs were not separable from the utilitarian function of a cheerleading uniform and because, in any event cheerleading uniforms were not eligible for copyright protection.
Varsity Brands successfully appealed, although the appeal court was divided. The majority found that the graphic features in question were more like a fabric design than a dress design and therefore did not serve a utilitarian function. The majority held that Varsity owned the copyright in the designs and remanded the case back to the district court.
The dissenting judge held that there was no conceptual separability and that Varsity’s designs were not eligible for copyright protection. He considered that the design of a cheerleading uniform was integral to its identifying function.
The dissenting judge said the law in this area would benefit from clarity from the legislator or the Supreme Court but, pending such clarification, the position is that even if the uniform has a utilitarian purpose, the fabric design on the uniform is protectable as an original fabric design as it is in the case of any other garment, assuming that it meets the low threshold level of originality required.

Patents and the meaning of “obvious to try”
In order to be patentable an invention must show, amongst other things, the existence of […]
In order to be patentable an invention must show, amongst other things, the existence of an “inventive step”. One way in which an opponent may seek to demonstrate a lack of inventive step is by showing that the apparently inventive step was in fact “obvious to try”; in other words, a person skilled in the art would think of undertaking that step and do so with some expectation of success.
Quite what “obvious to try” means in practice is not clear but the Court of Appeal has recently provided some guidance in the case of Teva v Leo Pharma [1].
The patent in suit concerned an ointment to treat the skin condition, psoriasis. The treatment used two active ingredients each of which was already well-established for use in treating psoriasis but the two were not used together and indeed patients were warned that the two ingredients should not be used together. The reason why they could not be used together was that each required the use of a stabilising aqueous solvent. As one of the ingredients was acid and the other alkaline, the same solvent could not be used in each case.
The issue for researchers was whether a non-aqueous solvent might do the job so that an ointment could be produced which would use both the active ingredients. And, if so, which solvent? At trial the prior art in issue was for a patent using a non-aqueous solvent that was used as an anti-inflammatory steroid. Birss J found that, based upon this prior art, the idea of using the solvent in question as part of a research project was obvious.
The Court of Appeal disagreed, ruling that Birss J had set the hurdle for “obvious to try” too low. The Court of Appeal held that there was nothing about the prior art that made it a stand-out candidate to trial for the dual active ointment for the treatment of psoriasis. It was rather just one of a number of non-aqueous solvents that potentially might be worth exploring further. Simply because it was a non-aqueous solvent did not mean it would necessarily work.
The Court of Appeal’s approach was anchored in the real world, where researchers are confronted with obstacles, deadlines, budgets and so on. It was also relevant that the problem addressed by the patent had existed for a number of years without a solution and Birss J, in the Court’s opinion, had failed to address his mind to why the problem was not addressed before the patent in suit.
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[1] [2015] EWCA Civ 779

Trade marks and duty suspension arrangements
Can a trade mark proprietor stop a third party from placing goods covered by the […]
Can a trade mark proprietor stop a third party from placing goods covered by the trade mark under a duty suspension arrangement, having introduced them into the EEA without the proprietor’s consent?
The Court of Justice of the European Union (CJEU) has ruled in favour of Bacardi holding that it was entitled to stop its trade marked goods from being placed under a duty suspension arrangement by a third party [1].
In 2006, several shipments of Bacardi products were transported to the Netherlands from outside the EU at the request of the distributor, Van Caem. These goods were then stored with Top Logistics in a warehouse in Rotterdam. They were given a T1 status (i.e. goods that have been imported into the EU and the duty and VAT has not been paid in full). Some of the goods were then released for free circulation into the European Economic Area (EEA) under a separate duty suspension agreement and were placed in a tax warehouse.
Bacardi had not consented to the goods being imported into the EEA. It sued Van Caem and Top Logistics in the Rotterdam District Court, arguing that releasing products under a duty suspension arrangement without its consent constituted trade mark infringement.
Bacardi succeeded at first instance. On appeal, the Hague Court of Appeal ruled that, as long as the Bacardi bottles had the status of T1 goods, there was no infringement of Bacardi’s trade marks. However, it applied to the CJEU for a preliminary ruling on the relationship between a duty suspension arrangement and Article 5 of the Trade Marks Directive [2]. Article 5 entitles a trade mark proprietor to prevent the sale and distribution of their products “in the course of trade” and The Hague Court asked whether goods placed under a duty suspension arrangement are considered to be in the “course of trade”.
The CJEU ruled that to limit a trade mark proprietor’s ability to prevent the distribution of products under a duty suspension arrangement would adversely affect the function of the mark, namely to identify the undertaking from which the goods originate and under whose control the initial placing on the market is organised. Accordingly, in the words of the CJEU: “The proprietor of a trade mark registered in one or more Member States may oppose a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor”.
Van Caem’s actions, in importing the goods into the EU without Bacardi’s consent, detaining them in a tax warehouse until the import duties were paid and releasing them for consumption constituted trade mark infringement. However, Top Logistics, in providing a warehouse service, was not infringing Bacardi’s trade marks under the Trade Marks Directive.
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[1] Case C-379/14, Top Logistics BV and Van Caem International BV v Bacardi
[2] Directive 89/104