IP Two Minute Monthly – Nov/Dec 2020

This is our summary of developments and cases in the world of IP from November and December which should take you no more than four minutes to read (two per month!):


Phonograms, TV Programmes and Communication to the Public

The CJEU was asked to decide whether the communication to the public of a phonogram recording fixed in an audio visual recording and then broadcast on TV channels triggers the payment of the single equitable remuneration under the Rental and Lending Directive. “Phonogram” is not defined in the Directive, but the Court held that an audio visual recording containing the fixation of an audio visual work cannot be classified as a ‘phonogram’ or ‘reproduction of that phonogram’ within the meaning of the Directive. Accordingly, the communication to the public did not give rise to the right to remuneration (the Atresmedia case (Case C-147/19)).

Agents and Trade Marks

The EU Trade Mark Regulation allows a trade mark owner to prevent their agent or representative from applying to register the trade mark in their own name without their consent, unless the agent or representative can justify their action. The CJEU upheld the opposition on appeal, finding that the applicant was an agent of the trade mark owner under the terms of the distribution agreement in place between them which imposed a general duty of trust and loyalty. The Court held that the relevant article of the Regulation applied where the marks and the goods/services were similar as well as identical, and there was no need to show a likelihood of confusion (EUIPO v John Mills Ltd (Case C-809/18 P)).

Technical Function and Community Designs

The EU General Court upheld a decision finding that a registered Community design for a product which filled balloons with water so they could be used for water fights (!) was invalid because all of its features were solely dictated by technical function. It was not necessary for the features of appearance of the product to refer to one single technical result. The features may produce several technical results, as long as they contribute to achieving the technical result intended by the product (Tinnus Enterprises v EUIPO (Case T-574/19)).

Post-sale Confusion and Passing Off

In a case involving the design of jeans, in addition to finding UK unregistered design right and patent infringement, the judge also found the defendant liable in passing off, not just for point of sale confusion, but also for post-sale confusion in relation to the branding on the rear pockets (Freddy Spa v Hugz Clothing [2020] EWCH 3032 IPEC).

Disclosure and Confidential Information

The Court of Appeal has given guidance on limitations of disclosure of confidential information in IP cases in  Oneplus Technology (Shenzen) Ltd and others v Mitsubishi Electric Corporation and another [2020] EWCA Civ 1562.

Pay for Delay and Patents

Teva Pharmaceutical Industries Ltd and its subsidiary Cephalon Inc were fined over EUR60 million for an unlawful patent settlement in breach of Article 101 of the TFEU, under which Teva agreed to delay entry of a generic version of Cephalon’s sleep disorder drug in exchange for payments and other commercial benefits.

FRAND, Damages and Patents

The High Court limited damages for patent infringement to acts of infringement of a UK patent only, in spite of the Defendant’s refusal to enter into a worldwide FRAND licence, because the failure was not caused by the patent infringement, and foreign sales were not caused by acts of infringement of the UK patent (IPCOM GmbH and Co Kg v HTC Europe Co Ltd and others [2020] EWHC 2941 (Pat)).

Declarations of Infringement and Trade Marks

In an undefended trade mark and passing off case, although the judge found infringement he declined to grant a declaration of infringement to the Claimants because, among other reasons, there was no active dispute between the parties since no defence had been filed, and the Claimants had wanted to use the declarations against third parties (Juul Lab Inc and others v MFP Enterprises Ltd [2020] EWHC 3380 (Pat)).

Appearance of Products and Protection of Designations of Origin for Agricultural Products and Foodstuffs

The CJEU ruled that Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs prohibit not just use of the registered name but also the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name (Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS (Case C-490/19)).

Clothing and Trade Marks

The Court of Appeal upheld the trial judge’s finding of infringement by Bentley Motors of use of its B-wings logo and the word Bentley in relation to Bentley Clothing’s trade marks for clothing. In doing so, the Court had to consider the transitional provisions relating to the defence that acts which did not infringe prior to the Trade Marks Act 1994 coming into force did not infringe thereafter. The particular issue was the meaning of “continued use”, and there was no justification for interfering with the judge’s formulation (Bentley 1962 Ltd and another v Bentley Motors Ltd [2020] EWCA Civ 1726).

Revocation and Trade Marks

The CJEU has confirmed that, in the case of a counterclaim for the revocation of rights in an EU mark, the relevant date for the purposes of determining whether the continuous five-year period of non-use has ended is the date on which that counterclaim was filed (Husqvarna AB v Lidl Digital International GmbH & Co. KG (Case C‑607/19)).

Simon Clark


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