in-house counsel masterclass: ip & technology law · millen v karen millen fashions ltd • did...

In-House Counsel Masterclass: IP & Technology Law Tuesday 4 April 2017

@mhclawyers

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Welcome

Richard Woulfe Partner & Head of IP Mason Hayes & Curran

Recent IP Case Law

Gerard Kelly Partner Mason Hayes & Curran

Key Developments and Trends

• Trade marks / passing-off

• Designs

• Copyright

• Patents

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Trade Marks / Passing Off

Shapes

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“The Shape of Things to Come”

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Simba Toys GmbH & Co. KG v EUIPO

(CJEU 2016)

• The Rubik’s Cube shape could not qualify for trade

mark protection due to it’s inherent functionality.

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Glaxo Wellcome UK Limited and Glaxo Group Limited v Sandoz Limited (2016)

• Interpretation of colour marks.

• How should a trade mark application or registration be

construed where there is no congruence between the visual

representation and the description?

• May a colour mark encompass more than one form, i.e. can

there be variants without contravening Article 4?

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Assessment of Similarity - Guccio Gucci SpA v EUIPO

• Not necessary to conduct a global assessment of similarity

when the marks were found to be completely different.

• Found that the relevant public would perceive the contested

mark as a purely figurative and abstract sign, rather than

interlocking Gs.

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“What’s in a Name?”

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Supermac’s EUTM Application

• Partially successful opposition by McDonald’s

• Opposition based on fourteen registered ‘Mc’ / ‘Mac’ word

marks e.g. ‘Mc’, ‘McMuffin’ and ‘Big Mac’

• Supermac’s has now moved against McDonald’s by formally

submitting request to EUIPO to cancel the use of the Big Mac

and Mc trademarks registered in certain classes.

• Accuse McDonald’s of “TM Bullying”

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Future Enterprises Pte Ltd v EUIPO

• Family of marks

• Phonetic similarity – similar overall

• “Mc” prefix held to be capable of characterising a family of

marks.

• Considerable reputation enjoyed by McDonald’s

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Millen v Karen Millen Fashions Ltd

• Did an undertaking not to use any Intellectual Property

Rights, defined as including “the right to prevent passing off”

also include “goodwill”?

• Undertaking achieved the same aim.

• Claimant prevented from using Karen Millen name.

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Comparative Advertising

• Aldi v Dunnes Stores (2015)

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Comparative Advertising ctnd.

• Injunction granted by Cregan J

• Not comparing like with like and not pointing out differences.

Peach Peach &

Nectarine

6.9% Fruit 10% Fruit

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Aldi v Dunnes – Court of Appeal (2017)

• Court of Appeal allowed the appeal by Dunnes Stores.

• Injunctions obtained by Aldi in 2015 were set aside.

• Incorrect legal tests applied in High Court.

• A comparison of products meeting the same needs or intended

for the same purpose may be compared by reference only to

price, as long as the comparison is not misleading.

• Remains to be seen whether a retrial should be directed since

issues were not evaluated at first instance in accordance with

correct rules.

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Designs

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Min Liu v EUIPO

• Portable computer cases.

• Lack of novelty.

• Evidence showing identical designs available on Amazon website

through third parties days before grace period began.

• Disclosure must be made by a designer or his successor in title.

• RCD holder did not sufficiently prove he was owner of design.

• General Court dismissed the appeal.

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Trunki – Supreme Court (2016)

• Upheld Court of Appeal decision regarding no infringement

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Individual Character of RCD’s

• RCD registered for ‘suitcases’

• Invalidity application filed by Magmatic Ltd

• Difference in colours not decisive.

• Overall impression is not similar because of numerous

differences and common features are standard.

• Appeal dismissed by BOA.

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Copyright

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McFadden v Sony Music Entertainment Germany GmbH

• Shop Wi-Fi internet connection used to make copyright-

protected musical works available for download

• Any requirement for McFadden to terminate, monitor or

password-protect his Wi-Fi service would be incompatible with

the fair balance of competing fundamental rights.

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Court Ordered Graduated Response System for ISPs confirmed

• Court of Appeal – 28 July 2016

• An ISP may be ordered to engage with its subscribers by

issuing letters following complaints from rightsholders on a

systematic basis.

• Sending of 2 letters and notifying rightsholders of 3rd warning

where further court application required.

• An element of cost sharing is appropriate for the ISP

implementing any injunction sought by music rightsholders.

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MPA Blocks in Ireland

• 6 major film and TV studios secured injunctions directing

internet service providers to block access to websites involved

in illegal streaming or downloading of films and TV shows.

• No cap on the amount of notifications for the time being.

• No costs order.

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Football Association Premier League Ltd v British Telecommunications Plc

• Injunction sought against an access provider that would require it to block

access to streaming servers giving unauthorised access to content.

• First “Live” Blocking Order granted in the UK.

• Only has effect at times when live match footage is being broadcast.

• List of target servers re-set each match week during the season.

• Requirement of notice to be sent to each hosting provider each week when

one of its IP addresses is subject to blocking.

• Demonstrates how technological advancement prompts re-consideration of

traditional approaches.

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GS Media Decision

• Svensson previously held that providing hyperlinks to copyrighted

material would not be infringement if the linked content was already

'freely available'.

• CJEU says that linking to unauthorised content is not a

communication to the public unless one seeks financial gain and has

knowledge of illegality.

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Patents

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Discovery in Patent Litigation

Boehringer v Teva

• The Court of Appeal appeared to restrict the ability to obtain

discovery in patent cases where it was previously readily

available.

• Also relevant that there were ongoing proceedings between

related companies in relation to the equivalent UK patent.

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Discovery in Patent Litigation Bristol Myers Squibb v Merck Sharp and Dohme (October 2016)

• Proceedings issued when it became apparent that the defendant

was making the KEYTRUDA product in Ireland and were held out

as doing so for and on behalf of MSD.

• Costello J - Referred to Boehringer principles – litigious

advantage? Proportional? Reasons necessary? Objections based

on quantity, cost, confidentiality?

• Not necessary in every case to present the kind of evidence

adduced in Boehringer to resist order for discovery but some effort

must be made to give court a precise picture of what is involved.

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Confidentiality

Teva v Boehringer (14 July 2016)

• The applicant sought an order permitting it to present

evidence, regarding interaction with the regulator in

seeking market authorisation for its Braltus product, under

certain specified confidential conditions.

• “The cat would be out of the bag”

• Order granted – costs application to be heard in camera.

• Appealed to the Court of Appeal

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Costs

Teva v Boehringer (27 July 2016)

• IP right set to expire before court determination

• Court should ordinarily lean in favour of making no order

as to costs in cases which have become moot as a result

of factor outside the control of the parties.

• Petitioner liable for costs of motion to stay as they should

have conceded then.

• No order as to costs in respect of rest of proceedings as

matters outside the control of the Petitioner.

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Conclusion

• Difficulties in registering shape marks continue

• Comparative Advertising – clarity on the legal tests to be

adopted with an emphasis favourable to such advertisements

• Difficulties in assessing the scope of protection of designs

• Orders against third party service providers continue to

develop and expand in scope

• Discovery may be more restricted in IP cases going forward

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Thank you

Gerard Kelly IP Partner Mason Hayes & Curran e: gkelly@mhc.ie t: +353 1 614 5093

Insert headshot here

Brexit – the implications for IP

Mason Hayes & Curran

25 April 2017

Richard Plaistowe

All is speculation

BrexIP?

o EU trade marks

o Community designs

o Patents

o Enforcement

o Protected Geographical Indications

o Other IP?

EU trade marks - scenarios

o Cliff edge

o Conversion

o Continuance

o Carrying forward

Community designs – scenarios

o Registered designs

– Same as for EU trade marks

o Unregistered designs

– Continuance of existing rights?

– Post-Brexit designs?

What to do?

o Comforting noises …. – https://www.gov.uk/government/news/ip-and-brexit-the-facts

o UK still in the EU until March 2019

o Trade marks?

o Designs?

o Review agreements

Patents

o Not affected BUT

– Unitary Patent and Unified Patent Court

– UK due to ratify BUT …..

Enforcement

o EU TM/Community design courts

– UK courts

– Pan-EU injunctions

o Exhaustion of rights

o CJ EU decisions

Protected Geographical Indications

o Champagne, Feta cheese, Melton Mowbray pies, Prosciutto di Parma

o Also - Clare Island Salmon, Connemara Hill Lamb, Timoleague Brown Pudding

and Waterford Blaa

o UK GI regime immediately post Brexit unlikely – New UK GIs cannot be protected in EU

– Vulnerability of existing UK PGIs?

– PGIs not protected in UK, BUT

o Extended form passing off

o UK certification marks

– Great Repeal Bill?

Other IP

o UK unregistered design rights

– EU countries may no longer qualify

– Advisable to register key designs in UK

o Copyright

– No immediate impact

– Divergence from EU law

Great Repeal Bill

o A neat solution?

– Repeal the European Communities Act

– Convert EU law at Brexit into UK law

– Powers to make “correcting” secondary legislation

o Devils in the detail!!

So now you know!

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