Bristows’ IP Two minute monthly – October 2017


This is the first of our monthly series of updates on developments in the world of IP which should take you no longer than two minutes to read:
• Jurisdiction and Community Designs
The CJEU has given a preliminary ruling on various jurisdictional issues concerning infringement of Community Design rights within the EU. BigBen France made accessories for use with the Nintendo Wii which were sold by its Germany subsidiary to consumers in Germany and Austria. Nintendo sued both companies in France for Registered Community Design infringement. The Brussels Regulation (recast) allows defendants from different EU Member States to be joined to proceedings in one Member State provided that the law and facts are sufficiently closely connected. The effect of the decision is that where you sue one defendant in their home state (in this case, France) and join another defendant to those proceedings (the German defendant), the claimant can seek pan-EU relief against BOTH defendants, even though the latter is not being sued in their home state (which would usually limit the relief just to their home state). The court also confirmed that it is permissible to use photographs of protected designs for the purpose of explaining how another product will work with them (here, accessories for the Wii) provided that certain conditions are fulfilled. Finally, where various infringing acts are committed in different countries by a defendant, where there is no specific provision under a Community instrument, the applicable national law will be the law of the country where the event giving rise to the damage occurred. This will be where “the initial act of infringement at the origin of that conduct was committed or threatened” by the defendant, based on an overall assessment. For website sales, this is likely to be where the content was put onto the website, rather than where the website was read.

• Novelty and Community Designs
Another CJEU designs case, this time confirming what most thought was the case, namely that the class under which you define your registered design (e.g. lamps) does not limit to those types of goods the scope of protection for infringement or relevant prior art for novelty purposes (the Easy Sanitary Solutions decision).

• Parts of Designs and UK Unregistered Design Rights
Continuing the design theme, we were successful on behalf of our client deVOL Kitchens in defending allegations of UK unregistered design right infringement and Registered Community Design infringement brought against them by competitors Neptune. Whilst the unregistered design right claims failed both because the designs had not been copied and were not sufficiently similar anyway, the judge also clarified the law on claiming parts of designs. These had to amount to concrete rather than abstract parts of an article. The registered design claim failed as the only part which gave the registration individual character over earlier kitchen cabinet designs did not appear on deVOL’s design

• EU Trade Mark Regulation and Trade Marks
Further amendments made to the EU Trade Mark Regulation came into effect on 1 October 2017, including the introduction of EU certification marks and the abolition of the need for trade marks to be graphically represented (e.g. sound marks can be registered with an audio file).

• Databases, the Database Right and Copyright
The High Court has held that a pdf of a report displaying diagrams and results from ECG tests was a database, that both the database right and copyright subsisted in it, and that the defendant’s infringement had been flagrant (the Technomed case).

• Descriptiveness and Trade Marks
The EU General Court has upheld the validity of the trade mark LOVE TO LOUNGE for clothing, saying that it was not descriptive of “loungewear” or “loungers”, but was simply a vague message relating to the pleasure in relaxing.

• Distinctiveness and Trade Marks
To stop the word Velcro becoming generic Velcro have issued a video encouraging people to refer to non-Velcro products as “hook and loop”. To watch their lawyers sing their “catchy” song, click here

• Correspondence and Groundless Threats
Changes to the groundless threats laws came into force on 1 October which were largely designed to harmonise their application across the various different IP rights. However, our advice remains that correspondence to potential infringers needs to be worded carefully to avoid the risk of a counterclaim for groundless threats being made against you.

Jeremy Blum


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