IP Snapshot: August 2007

The CFI has found that earlier use of the unregistered mark TOSCA for perfumery and body care products was insufficient to oppose applications for TOSCA and TOSKA for leather accessories and clothing.

For the full judgment in this case, click here.

The CFI has found similarity of goods as between "clothing, footwear and headgear" and "leather and imitation goods" and consequently allowed an appeal against a Board of Appeal's refusal to allow an opposition.

For the full judgment in this case, click here.

Market operators have been convicted of money laundering as a result of counterfeit goods being sold by stallholders. In a criminal trial before St Albans Crown Court, the company "Wendy Fair Markets Ltd.", which runs Bovingdon Market, and two of its directors were found guilty of money laundering. Evidence showed that some of the stalls – an estimated 20% – were selling counterfeit goods, including CDs, DVDs and computer software. The company and its directors, who had received money in the form of pitch rents from the stallholders, were found to have ‘turned a blind eye’ to the ongoing violation of copyright and other IP rights.

Procter & Gamble has succeeded in an appeal against a decision of the OHIM examiner refusing an application for the shape and colour of the packaging of their Febreze product.

For the full judgment in this case, click here.

The High Court has upheld the decision of the Hearing Officer allowing an opposition by Direct Line Insurance Plc to an application by esure Insurance Limited to register a three-dimensional mark consisting of a computer mouse on wheels in respect of insurance and financial services in class 36, based upon earlier two and three-dimensional images of a telephone on wheels, registered for identical services. Although the Hearing Officer’s decision that the marks were sufficiently similar to establish a likelihood of confusion was criticised, the objection on dilution and unfair advantage was upheld, once again suggesting how much easier the courts seem to find unfair advantage when the field of operation of the parties is the same, or similar.

For the full judgment in this case, click here.

The Appointed Person has upheld the decision of the Hearing Officer to reject seven applications to register icons for use on computer and mobile telephone screens as trade marks. In the absence of any acquired distinctiveness, all of the marks were either lacking in distinctive character, or descriptive, or both. The decision illustrates the difficulties in obtaining registration for functional icons in software applications without extensive evidence of use and consumer perception.

For the full judgment in this case, click here.

The Copyright Tribunal has made an interim decision regarding collective copyright licensing and digital downloading and streaming. The decision centred on how much is paid in royalties when music is used or transferred in an on-line service. These on-line music offerings included permanent downloads, limited downloads and on-demand streaming/webcasting.

For our full Law-Now on this decision, click here.

The government response to the House of Commons Culture, Media and Sport Select Committee report on new media and the creative industries has been published. The response indicates that the government is largely supportive of the Committee’s report. However, the government has rejected the Committee’s recommendation to press the European Commission to bring forward its proposals for an extension of copyright for sound recordings to at least 70 years. The government’s rationale for this rejection is that it is in line with the Gowers Review. UK musicians and their representatives, such as the BPI, have objected to this approach.

For the full text of this report, click here.

A preliminary decision of the High Court has clarified that, for the purposes of assessing novelty and individual character, "the sector concerned" referred to in Article 7(1) of the Community Trade Mark Regulation, is the sector or sectors in which the earlier design is known.

For the full judgment in this case, click here.

Pumfrey J has held that a patent for manufacturing a single crystalline form of a known pharmaceutical, which could take three possible crystalline forms, is invalid. The original patent for manufacture of the pharmaceutical showed that this process would inevitably produce the claimed crystalline form. Pumfrey J held that, although claims had to be construed at their priority date, it was irrelevant that at the date of the original patent it was not known that the pharmaceutical could have more than one form. The original patent anticipated the patent in suit, which also was obvious in the light of the original patent.

For the full judgment in this case, click here.

The majority of the Court of Appeal (Jacob LJ dissenting) allowed an appeal against the High Court’s decision to refuse an application for disclosure of an inventor’s records. The majority judges refused to endorse a prima facie rule preventing such disclosure being ordered as they thought it would be unjust. Despite acknowledging Jacob LJ’s expertise in patent cases, they considered that rather than adopting a blanket rule of non-disclosure of inventors’ records, in the interests of proportionality, disclosure should be tailored depending on the likely value and significance of the evidence to be disclosed and the costs in doing so providing evidence in relation to obviousness and highlights the increasing costs of patent litigation.

For our full Law-Now on this important case, 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 30/08/2007.