IP Two Minute Monthly - May 2013

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Here are our summaries for last month which shouldn’t take you more than two minutes to read. If you would like further details on any of the issues we have highlighted, please let us know by using the contact link on the left hand side.

ADWORDS AND TRADE MARKS

Interflora have won their long-running trade mark battle against Marks & Spencer. M&S were bidding on the word “interflora” so that Google users who searched for Interflora were presented with an advert for M&S’ online flower delivery service in the search results. Interflora said this was unlawful use of their trade mark – M&S said it was fair competition.

Given the novel and important issues involved, the UK Court referred the issue to the European Court for guidance. That guidance was essentially that it was fair competition to bid on another’s trade mark as an Adword provided that consumers did not have difficulty in ascertaining whether the services advertised originate from the trade mark owner or from someone else. The UK Court therefore had to decide the case on the facts, and concluded that a significant proportion of consumers wrongly thought that M&S was part of the Interflora network. As a result, M&S were liable to Interflora for trade mark infringement.

Interflora are somewhat unique given that their members use their own brand alongside the Interflora brand, so it will be much harder for other brand owners to succeed in trade mark infringement actions against competitors bidding on their brands as Adwords.

SLOGANS AND TRADE MARKS

The owners of the Cup-a-Soup brand, which uses the slogan "a great big hug in a mug", failed to prevent the makers of the flu remedy Lemsip from registering "hug in a mug" as a trade mark. The UKIPO decided that both could co-exist because of the different nature of the businesses.

TRADE MARKS AND CLASS HEADINGS

In his ruling following the ECJ’s answers in the ONEL case, the Appointed Person found that there was no need to refer the matter back to the ECJ for clarification of its previous answers. The ECJ had declared that applicants using just the “class headings” to describe the goods or services to be covered by their trade mark application should state whether they intended to cover all the goods/services falling within the class, or just the goods/services described in the class heading. That was what the applicant in this case was therefore ordered to do.

COPYRIGHT AND PASSING OFF

A manufacturer of unauthorised merchandise based on the children’s TV programme Button Moon was found to have infringed copyright in the original puppet designs (found to be works of artistic craftsmanship) and to be liable for passing off, with a disclaimer stating that the products were unauthorised being found to be insufficient in both size and wording. Flagrancy damages were also awarded.

GM CROPS AND PATENTS

The US Supreme Court has enforced Monsanto’s patent rights in a genetically modified soybean to prevent farmers from collecting seed from the first year’s harvest and sowing that seed to avoid having to buy further seed from Monsanto. Monsanto’s patent rights had not been exhausted on the first sale.

TOBACCO AND PACKAGING

The UK is abandoning its plans to follow Australia’s lead for the time being and introduce a plain packaging law for tobacco. The Irish government, however, announced that it was going to introduce such a law.

ISPs AND BLOCKING INJUNCTIONS

The six largest ISPs in the UK blocked access to two more file sharing and streaming websites as a result of an injunction obtained by the Motion Picture Association.

PATENTS AND COMPETITION LAW

The EU Commission has served a Statement of Objections on Motorola alleging abuse of a dominant position following Motorola’s court action in German in which they obtained an injunction against Apple for patent infringement. The patent is said to be a standards essential patent, which should be licensed on fair, reasonable and non discriminatory (FRAND) terms.

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