IP Two Minute Monthly – October 2021

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


Decompilation, Error Correction, Software and Copyright

The CJEU confirmed that Articles 5 and 6 of the Software Directive are independent of each other, such that the owner of software is entitled to alter the program in order to correct errors in it under Article 5, without having to comply with the conditions relating to permitted decompilation under Article 6 (Top System SA v Belgium State Case C-13/20 ECLI:EU:C:2021:811).

Injunctions, FRAND Licences and Patents

The Patents Court has made it clear that a party must commit to taking a FRAND licence determined by the English court in order to avoid a FRAND injunction on a patent held to be valid and essential. For a detailed discussion of the judgment, see Bristows FRAND tracker here.

Protection of Parts of Products and Designs

The CJEU confirmed that unregistered Community design can protect a part of a complex product where the overall design in which the part is incorporated has been disclosed to the public, provided that the appearance of that part is clearly identifiable at the time the design is made available. It was not necessary for the specific part to have been disclosed separately. The case concerned parts of bodywork for a Ferrari (Ferrari Spa v Mansory Design Holding GmbH Case C-123/20 ECLI:EU:C:2021:889).

Obviousness and Patents

We were successful for our client Teva in invalidating a Bayer patent relating to a cancer drug, with the judge finding that the patent was invalid for obviousness. See here for further information (Teva Pharmaceutical Industries Ltd and another v Bayer Healthcare LLC [2021] EWHC 2690 (Pat)).

Bad Faith and Trade Marks

For an EU General Court decision which commented on various different types of evidence relied upon by the applicant to try to show that it did not apply for its trade mark in bad faith, see Univers Agro EOOD v EUIPO – Shandong Hengfeng Rubber & Plastic Co. Ltd (T‑592/20 ECLI:EU:T:2021:633).

Blocking Injunctions and Copyright

The major film studios obtained blocking injunctions against the UK’s largest ISPs (who did not resist the application) after the judge found that five websites infringed copyright by providing links to third-party sites enabling users to stream films. The sites were targeted at the UK (applying the criteria from the Tunein judgment), amounted to communications to the public (as they fell within the GS Media criteria), and authorised infringements of copyright (applying the FAPL judgment from 2017 (Football Association Premier League v British Telecommunications plc [2017] EWHC 480 (Ch)). The FAPL case concluded that copies in the users’ internal memory of their computers amounted to primary infringements, which in our view appears contrary to the Supreme Court’s ruling in PRCA v NLA where such copies were found to fall within the temporary copying exception (Columbia Pictures Industries Inc others v British Telecommunications plc and others [2021] EWHC 2799 (Ch)).

Indirect Confusion, Bad Faith and Trade Marks

We were successful in our opposition on behalf of McDonalds against an application to register MCVEGAN as a UK trade mark. The UKIPO found that McDonalds owns a family of Mc-related trade marks, such that there was a likelihood of indirect confusion, and that the application was a “paradigm example of bad faith” (Children’s Cancer Aid Ltd v McDonald’s International Property Company, Ltd Case O-675-21).

Simon Clark


Related Articles