SnIPpets: January 2013
11 January 2013
snip•pet (snip′it) - noun - a small piece or
portion, specifically of information
Welcome to the January 2013 issue of snIPpets, the intellectual
property newsletter from Field Fisher Waterhouse covering
intellectual property news from the last few months. We hope that
you will find it an interesting and enjoyable read. If you have any
questions or comments on the topics discussed, or IP matters in
general, please get in touch.
In this edition of snIPpets the topics discussed are as
Court of Appeal restricts the use of witness gathering exercises in
trade mark infringement cases
The Court of Appeal has provided important guidance that will
restrict the use of surveys and evidence from witnesses who
responded to surveys in trade mark infringement cases. This should
simplify the way that cases need to be prepared, significantly
reducing the costs of trade mark enforcement.
Warning for owners of trade marks with a "figurative figleaf of
The High Court rules that a descriptive CTM, which was only
registered because it included figurative elements, cannot prevent
the use of a sign that doesn't include those elements.
Advocate General advises that registering a CTM should not be a
defence to infringement
The AG advises that registering a sign as a Community Trade
Mark cannot be a defence to infringement of an earlier
3-D Scrabble Tile: not a sign capable of graphic
The High Court invalidates a trade mark registration for the
scrabble tile for not being a sign and not being capable of graphic
Use of a different form of trade mark can still be genuine
The CJEU confirms that use of a trade mark in a form that is
different to the mark as registered can be sufficient for proving
genuine use, where the differing elements do not alter the
distinctive character of the mark.
Yoghurt is Yoghurt
The Irish Patents Office revokes the ACTIVIA trade mark for
virtually all goods covered by its registration on the basis of
China trade Mark Practice Note – Retail
Chinese Trade Mark Office now allowing trade marks to be
registered in relation to “retail and wholesale services for
pharmaceutical, veterinary and hygienic preparations and goods for
pharmaceutical purposes” in class 35.
at the High Court
The Court of Appeal has dismissed an appeal in the FA Premier
League v QC Leisure case confirming that the defence of "free
public showing or playing of broadcast" applies to the highlights
and match replays contained within Premier League
English Court takes jurisdiction over another database infringement
The High Court will decide whether
remotely extracting information from a database located in the UK
and using it elsewhere is an infringement of database rights in the
The Informed User can have an imperfect
The CJEU confirms that, when comparing the overall impression
of a Community design with an earlier trade mark, the informed user
may sometimes have an imperfect recollection.
don't own my email!
The High Court confirms that there is no property in the
content of an email.
English Court flexes its muscles on declarations of
The High Court confirms that it has jurisdiction to grant
declarations of non-infringement in relation to foreign patent
Proposal to make clinical trials less risky and online drug sales
UK Government and EU Commission have been asking the pharma
industry to comment on their proposals to make UK clinical trials
for innovative drugs less risky and the purchase of online
of Appeal confirms invalidity of patent for EXELON because it was
obvious to resolve racemate using standard
COA upholds High Court's ruling that Novartis AG's patent covering
a (-)-enantiomer was invalid for obviousness.
Patents / Competition
Astra Zeneca loses appeal at ECJ
The CJEU has dismissed AstraZeneca appeal against the ruling in
which it was fined AZ €52.5 million for abusing its dominant
position in violation of EU laws.
The MBE Course: FFW Meets Budding Entrepreneurs
Beatriz San Martin provides a personal insight
into FFW's involvement in the Cambridge University Masters in
to watch out for in 2013
Key IP developments coming up in 2013
Other SnIPpets, including the
forging ahead of the Unitary Patent, proposed
costs management in IP litigation, changes to
UK copyright legislation and EU dialogue
on copyright in the digital age.
For further information, please contact Mark
Holah, Partner, Nick Rose, Partner or
Potts, Senior Associate (PSL) at
Field Fisher Waterhouse LLP