European IP Bulletin - Issue 106

by McDermott Will & Emery

Copyright -

..Court of Appeal Confirms High Court Decision and Finds no Copyright Infringement in Software With Same Functionality:

In SAS Institute Inc v World Programming Ltd [2013] EWCA Civ 1482 (21 November 2013), the Court of Appeal of England and Wales upheld the High Court’s decision that copyright protects the form of expression of an intellectual creation, rather than the intellectual creation itself, and found that World Programming Ltd had not infringed SAS Institute Inc’s copyright in its software and manual by creating a program with the same functionality as SAS’s program.

Patent -

..Court of Appeal Recasts Guidance on Granting Stays in Patent Proceedings While European Patent Office Proceedings Are Pending:

In IPCom GmbH & Co Ltd v HTC Europe Ltd and others [2013] EWCA Civ 1496, the Court of Appeal of England and Wales discussed the effect of the decision of the Supreme Court in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46 on the guidelines for granting a stay set out by the Court of Appeal in Glaxo Group Limited v Genentech Inc. and Biogen Idec Inc. [2008] EWCA Civ 23 and has revised the guidelines.

..Advocate General Jääskinen Gives Georgetown University SPC Opinion:

On 14 November 2013, Advocate General (AG) Jääskinen’s opinion in the Dutch supplementary protection certificate (SPC) referral, Georgetown University (C-484/12), was released. AG Jääskinen declined to answer the question of whether or not more than one SPC can be granted in relation to the same basic patent. He did, however, advocate that a patent holder should be afforded the choice of which SPC application should proceed when multiple applications are pending simultaneously, and should be able to surrender previously granted SPCs in order to have another granted.

Trade Mark -

..CJEU Confirms Change in Economic Behaviour is Required to Prove Trade Mark Dilution:

In Environmental Manufacturing LLP v OHIM [2013] C-383/12 P, the Court of Justice of the European Union (CJEU) confirmed that evidence of change in the economic behaviour of the average consumer is required in order to prove trade mark dilution under Article 8(5) of Community Trade Mark Regulation (207/2009/EC).

..EU General Court Confirms No Proof of Genuine Use of Earlier Trade Mark in CTM Opposition:

In Biotronik SE & Co. KG v OHIM, Case T-416/11 the EU General Court upheld a decision of the Board of Appeal and rejected an opposition to a Community trade mark (CTM) raised by the proprietor of an earlier trade mark, on the grounds that the proprietor could not prove genuine use of its mark.

Trade Mark and Passing Off -

..Court of Appeal of England and Wales Confirms That Figurative CTM for “NOW” is Descriptive and Invalid -

In Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2013] EWCA Civ 1465, the Court of Appeal of England and Wales confirmed that a figurative Community trade mark (CTM) for “NOW” was descriptive and therefore invalid and that use of the mark in Hong Kong did not give rise to goodwill protectable in the United Kingdom.

Competition -

..Court of Appeal of England and Wales Allows Challenge to Jurisdiction in “Follow on” Damages Claim:

In Ryanair Ltd v Esso Italiana Srl [2013] EWCA Civ 1450 (19 November 2013), the Court of Appeal allowed a challenge to the jurisdiction of the English courts to hear a claim for “follow on” damages after a finding by the Italian Competition Authority (ICA) that Esso had engaged in anti-competitive behaviour.

Please see full issue below for more information.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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