Archive for June 2010

Patent Law Update – High Court upholds patent validity decision of the Patent Office

Monday June 21st 2010, by Piers Strickland

SUMMARY: The High Court has approved of and upheld the decision of a more cost-effective and efficient way of assessing whether patents are valid (as opposed to going to court).

BACKGROUND: The High Court has recently upheld the decision of the Patent Office (otherwise known as the Intellectual Property Office (IPO)) in the case of Nampak Cartons Ltd v Rapid Action Packaging Ltd [2010] EWHC 1458 (Pat), 18 June 2010. The hearing officer in the Patent Office had held that a patent for a carton for holding a sandwich with a specific means for tearing the carton open was valid.

The appellant (Nampak) appealed the decision of the hearing officer of the Patent Office that the patent (owned by Rapid Action) was valid.  In particular, Nampak sought to revoke a patent on the grounds that it was obvious in the light of cited prior art.

The Judge in the High Court, the Honorable Mr Justice Floyd held that he could interfere with the decision of the hearing officer if the hearing officer had erred in principle or was clearly wrong.  The Judge also referred to a previous case which stated that: “Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation” (as per Lord Hoffmann in Biogen v Medeva [1997] RPC 1 at page 45).

COMMENT

This decision is good news for those companies who are reluctant to spend millions of pounds litigating patents in the High Court.  If a company simply wants clarity on whether a patent is valid or invalid, and/or whether a product or process infringes a patent, then such an applicant may apply to the Patent Office for a declaration in this respect.  Such an application is likely to be a fraction of the price of making such an application in the High Court and crucially even an unsuccessful applicant will not be exposed to such a high level of legal costs as would be the case if such an application was made to the High Court.

Expect more companies to lodge such applications in the Patent Office in order test whether certain patents are valid.

If you would like to discuss making such an application to the Patent Office, please feel free to call us in confidence.

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Copyright Law and Database Law Update – Football Fixtures Lists Protectable by Intellectual Property Rights

Tuesday June 15th 2010, by Piers Strickland

The High Court of England and Wales has recently held that English and Scottish football fixture lists are protected by database copyright.

The Judge in this important piece of copyright litigation held that pursuant to section 3A of the Copyright, Designs and Patents Act 1988, which implements Article 3 of the European Database Directive (96/9/EC) (the “Directive”), that the process of preparing these football fixture lists involved very significant labour and skill, and was not merely the application of rigid criteria to the processing of data.  Accordingly, this meant that this “correct” kind of labour and skill (in qualitative and quantitative terms) qualified the fixtures lists for database copyright protection.

The Judge also held that the fixture lists were not protected by the sui generis right in the Directive (known as the “database right” in the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)), as there had not been any substantial investment in obtaining, verifying or presenting the content of the lists, as opposed to creating them.

COMMENT

This decision will be welcomed by UK football organisations and other sporting bodies that compile their fixtures in a similar way to that of the English and Scottish football leagues. It will also cause concerns for those companies whose businesses rely on reproducing such fixtures lists.  Such companies should perhaps review the way in which they are reproducing football fixtures lists etc, to make sure they are not vulnerable to a claim of copyright infringement.

This case was specific to its facts and will not necessarily help all database owners.  The Judge was clear that it was the “correct” type of skill and effort which went into preparing the fixture lists which was crucial.  Not all databases will utilise this type of skill and labour and so might not benefit from database copyright in the same way.  Of course, this could mean that companies reproducing databases of different kinds (to football fixture lists) might be less at risk of infringing copyright and/or the database right.

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Trade Mark Law Update – Google case clarifies EU trade mark law

Monday June 14th 2010, by Piers Strickland

The European Court of Justice’s decision in the Google v Luis Vuitton case (Case C‑236/08 Google France, Google Inc. v Louis Vuitton Malletier) has given some guidance on the law (in the UK and the EU) concerning using third party trade marks as Google Adwords (or similar).

In brief, the ECJ held that:

  1. It would not be trade mark infringement to use a third party trade mark as a Google Adword, so long as it was clear (and not confusing) in the search results that the advertiser in question was not the source of the trade marked goods and/or services.
  2. Google was not liable for registered trade mark infringement (on the basis that an Internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94).
  3. The ECJ also stated that an ISP company, such as Google, would not be liable, so long as they didn’t play an “active” role of such a kind as to give it knowledge of, or control over, the data stored.  If the ISP has not played such a role, that ISP cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

Comment

This case gives some importance guidance on trade mark law in the UK and the EU on the subject of using third party trade marks as Adwords on Google.  Having said that, as with many questions of intellectual property rights infringement, there is still a significant grey area. In particular, you need to look at the advert in question (the one brought up by use of the third party trade mark as an Adword) and ask the following questions:

1. Could an Internet user be confused into thinking that the advertised goods / services are those of, or, are linked in some way, to the trade mark owner?

2. Is the trade mark expressly referenced in the advert itself?

      If the answer to the above questions is “no” in all respects, then the chance of the use of trade mark (as an Adword) will be less likely to be considered an instance of trade mark infringement.

      In most cases, adverts can be amended to stay on the safe side of the law of registered trade marks.  If you need any advice on registered trade mark law in this respect, please contact us.

      Also, the third numbered point above of the Judgment is important in terms of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 (the ‘E-commerce Directive’), as it is the first ECJ on the hosting defence in the E-commerce Directive.   This defence can be crucial for ISPs in matters such as defamation and copyright infringement. Unfortunately, this ECJ decision leaves a lot of questions predictably unanswered, such as what conduct is required before it can be said that such conduct is something more than merely technical, automatic and passive, and, also what time period can be considered as “expeditious”?

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