In-House Counsel Masterclass: IP & Technology Law · Millen v Karen Millen Fashions Ltd • Did an...
Transcript of In-House Counsel Masterclass: IP & Technology Law · Millen v Karen Millen Fashions Ltd • Did an...
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: [email protected] 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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Thank you