Bristows IP two minute monthly – November 2017


Genuine use and trade marks
Slovenian bank Abanka was unable to demonstrate genuine use of its trade mark for ABANKA in the UK (save in respect of Eurobonds). As the bank did not have a UK banking licence, the High Court found that it was effectively providing Slovenian banking services to customers who happened to be located in the UK, rather than to providing services to them in the UK. The fact that a website is in English does not automatically mean it is targeting UK customers.
Arrow declarations and patents
Arnold J declined to grant an Arrow declaration to Mylan in respect of a particular drug injection regime for its product following the guidance given by the Court of Appeal in Fujifilm v AbbVie, having found that the regime was novel but obvious in patent revocation proceedings. In particular, the Court of Appeal had confirmed that the existence of pending divisional applications is not sufficient to justify the making of an Arrow declaration and counsel for Mylan was unable to explain what a declaration would add over the court’s judgment on revocation in the case. The judge also concluded that the Supreme Court did not reject the purposive construction approach to patent claims in Actavis v Eli Lilly even if the Supreme Court had introduced an additional doctrine of equivalents. However, the judge concluded that it was no longer the law that a claim lacked novelty if the prior publication disclosed subject-matter which, if performed, would necessarily infringe the claim. Instead, the claim would only lack novelty if the prior publication disclosed subject-matter which fell within the claim on its proper interpretation. It was not sufficient that the subject-matter would infringe the claim applying the doctrine of equivalents.
Interim injunctions and trade marks
The IPEC judge declined to grant an interim injunction to prevent a company using the mark MEMORIA as the name of an app to stored memories of deceased people brought by the owner of a trade mark for MEMORIA for memorial services. Whilst the judge found that the claimant might suffer some damage, it was not as great as the potential loss to the defendant of £1.5m investment, 80% of its workforce and first mover advantage.
Damages and copyright
The IPEC has upheld an award of £250 as damages based on a reasonable licence fee for the use of a photograph without consent on a website for 17 days (the Pablo Star Media case).
Bad faith, oppositions and trade marks
An argument by Aldi that BskyB’s apparent policy of re-filing its trade marks every 5 years to avoid non-use challenges amounted to bad faith was rejected because Aldi made it in EUTM opposition proceedings. Since bad faith is an absolute ground of refusal, it cannot be used as a defence in opposition proceedings. Separate action needs to be taken against the earlier right.
Game and quiz shows, format rights and copyright
Copyright may protect format rights provided that there are sufficient distinguishing features arranged in a coherent framework which can be repeatedly applied, according to the IPEC judge when rejecting the subsistence of copyright in a game show format which only consisted of commonplace elements (Banner v Endemol).
Same overall impression and Registered Designs
For a case similar to our Neptune v deVOL designs case reported last month see the Scomadi judgment, where a design for a classic-styled scooter was found to infringe a registered design even though the court found the scope of the registration to be narrow and the infringing design not to be identical.
Ownership, jurisdiction and trade marks
The CJEU held that the provisions of the Brussels Regulation requiring matters relating to the registration or validity of an IP right to be dealt with by the court in which the right is applied for did not extend to the ownership of a trade mark (following a previous ECJ decision reaching the same conclusion regarding the ownership of a patent) (Hanssen Beleggingen BV vs Tanja Prast-Knipping).
Linking and copyright
There have now been three German court judgments which have sought to narrow the scope of the CJEU’s decision in GS Media regarding the extent to which liability for copyright infringement can arise from linking to material which was not originally put on the internet with the rights owner’s consent. The German court held in the latest case (which concerned mobile phone cases with an image of a pug on) that knowledge that the material was infringing should not automatically be presumed just because the defendant’s activities were profit-making. In the particular case it would have been unreasonable for the defendant to check every link created using algorithms.

Jeremy Blum


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