IP Snapshot – November 2006 Bringing you monthly news of key developm…

IP Snapshot - November 2006 Bringing you monthly news of key developments in intellectual property law. TRADE MARKS L’Oreal v Bellure and others (High Court) The High Court handed down its decision in this high-profile trade mark infringement case, finding that ‘look-alike’ perfume packaging infringed L’Oreal’s trade mark rights. The Court held that a proprietor can establish infringement under section 10 (3) of the Trade Marks Act 1994 where similar packaging takes unfair advantage of the reputation of an existing brand, without the need to prove a likelihood that consumers would confuse the products. The Court emphasised that the purpose of a trade mark in modern commerce is not just to authenticate the origin of a product, it also serves to protect a valuable communication tool. In this respect, signs and marks on products can be similar for the purposes of dilution if they invoke an association with another brand, even if the possibility of confusion is low. However, the Claimant’s case in passing off and under s.10(2) failed since no likelihood of confusion had been established. KK Sony Computer Entertainment v Pacific Game Technology (Holding) Ltd (High Court) A Hong Kong based website selling Sony products intended only for the Japanese market has been prevented from selling the products to customers in the UK on the grounds of trade mark, copyright and registered design infringement. The case follows previous established law on the issue of consent but is interesting as it concerns online sales from an overseas website "targeted" at UK consumers. The Court was keen to take a practical view, noting "it would make no sense if intellectual property rights in the EEA could be avoided merely by setting up a website outside the EEA crafted to sell within it." For the full judgment in this case, click here DESIGNS Landor & Hawa International Limited v Azure Designs Limited (Court of Appeal) The Court of Appeal has denied an appeal from the Patents County Court over the interpretation of exclusions from protection for unregistered design right under the Copyright Designs and Patents Act ("CDPA"), and Community unregistered design right under the Community Designs Regulation ("CDR"). The Court held that exclusions for "a method or principle of construction" (s.213(3)(a), CDPA) and "features of appearance of a product which are solely dictated by its technical function"(Article 8(1), CDR) must both be interpreted narrowly. In the present case, the design of an expandable rigid suitcase would not be excluded from design protection simply because the design served a functional purpose, unless that purpose could not be achieved by any other means. Further, since the design included non-functional, capricious aspects, it would not fall within the exclusions in any event. Bailey and Bailey v Haynes and Haynes (Patents County Court) The Patents County Court has rejected a claim for the infringement of UK unregistered design right under the Copyright Designs and Patents Act, and Community unregistered design right under the Community Designs Regulation, for the design of a mesh used in bait bags for carp fishing. The Court held that UK unregistered design right did not subsist in the claimant’s design because the shape and configuration of the design was caused by the method or principle of construction. Accepting the subsistence of such rights in the mesh would effectively have granted the claimant a monopoly over that method or principle of construction. Although unregistered design right under the Community Designs Regulation could technically subsist in the mesh, there was no evidence of copying, so the claim under that head also failed. Quads 4 Kids v Campbell (High Court) On an interim injunction application to restrain an alleged threat of infringement proceedings, the High Court held that that the submission of an enforcement request through eBay’s Verified Rights Owner (VeRO) Program could constitute a groundless threat of infringement proceedings of Community Designs. The Court was concerned at the ability of a rights owner to use the VeRO program to "snuff out an avenue of the claimant’s business" without the need to follow up with formal proceedings, or any proper investigation of the veracity of the claim. The decision highlights the wide-ranging application of the groundless threats provisions, and raises the possibility that enforcement through eBay’s VeRO program may leave IP owners vulnerable to threats proceedings. To read our full Law-Now on the decision in Quads 4 Kids v Campbell, click here PATENTS Aerotel Ltd v Telco Holdings Ltd & Ors; Neil William Macrossan (Court of Appeal) The Court of Appeal has delivered its eagerly anticipated judgment in the Aerotel and Macrossan cases. These cases centred upon the patentability of business methods and computer programs. The Court of Appeal held that the correct approach to dealing with these exceptions to patentability is found by applying a 4-step test, as follows: 1. properly construe the claim; 2. identify the actual contribution; 3. ask whether it falls solely within the excluded subject matter; 4. check whether the actual or alleged contribution is actually technical in nature. In an unprecedented move, the Court of Appeal also recommended that the EPO Enlarged Board of Appeal consider a number of questions relating to the correct approach to determining whether a particular invention should be excluded from patentability under Article 52 of the European Patent Convention.

IP Snapshot – November 2006 Bringing you monthly news of key developm…

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