IP Two Minute Monthly – January 2022

This is our summary of developments and cases in the world of IP from January which should take you no more than two minutes to read:


Exhaustion of Rights

The Government decided not to make any changes to the current exhaustion of intellectual property rights regime in the UK, following its consultation on the issue, saying there was insufficient data to understand the economic impact of any changes. This means that rights in goods put on the market within the EEA will continue to be treated as exhausted in the UK, even though EU countries will not recognise exhaustion of rights in relation to goods put on the market in the UK now the UK has left the EU (although the position in Northern Ireland is more complex).

Validity, Infringement and Patents

The Court of Appeal upheld a High Court decision finding a patent for electrical sockets used in aircraft cabins valid and infringed (Lufthansa Technik AG v Astronics Advanced Electronics Systems and others [2022] EWCA Civ 20).

Similarity of Goods and Services and Trade Marks

When deciding whether goods or services are similar or dissimilar, the court or tribunal must decide whether they are complementary and therefore similar, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods or services lies with the same undertaking. The High Court held that an overlap in end user, without anything else, is not sufficient to find complementarity (Axogen Corporation v Aviv Scientific Ltd [ 2022] EWHC 95 (Ch).

Technical Function and Designs

The EU General Court has upheld a decision that a registered Community design for water purifiers was invalid because all the features of the product were dictated by its technical function, applying the CJEU’s decision in DOCERAM (Unger Marketing International LLC v EUIPO (Case T-483/20)).

Issue Estoppel and Patents

There is a general rule that no issue estoppel arises where no appeal is available, so Mylan were entitled to challenge the validity of a divisional application even though the parent patent had been declared valid in previous High Court litigation between the same parties (Neurim Pharmaceuticals (1991) Ltd and another v Generics (UK) Ltd (t/a Viatris) and another [2022] EWHC 109 (Pat)).

Injunctions and Trade Marks

The High Court refused an application by the Defendant to stay an injunction ordered following a finding of trade mark infringement in order to allow the Defendant time to re-brand, saying that that would effectively be authorising further infringements of the trade mark. A stay of three weeks was granted to allow time for the Court of Appeal to rule on an application for leave to appeal and a further stay (Combe International LLC v Dr August Wolff GmbH and Co KG Arzneimittel [2022] EWHC 125).

Distinctiveness and 3D Trade Marks

Volkswagen were successful on appeal when the Board of Appeal of the EUIPO found that the trade marks featuring representations of the VW Campervan were inherently distinctive and that the public would assume that the applicant’s figurative Cultcamper mark shown below was a variation of the VW mark.

Simon Clark


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