Bloomsbury IP/IT Briefing: May Teaser

There have been important decisions in two long-running trade mark sagas this month. Lord Justice Arnold gave his judgment in the SkyKick case, following the opinion of the CJEU in January. He found that Sky’s trade marks were partly invalid on the grounds of bad faith, but nevertheless valid and infringed by SkyKick at least for ‘electronic mail services’.

Sir Alastair Norris published a judgment in the Merck v MSD dispute, after the Court of Appeal remitted certain issues in 2017. The judgment deals in considerable detail with the issues between the parties, finding that many (but not all) of MSD’s actions constituted trade mark infringement. It may also be of wider interest to practitioners given what it says about de minimis and relief (specifically declarations, injunctions and publicity orders).

The Court of Appeal has upheld an IPEC judgment concerning a potential conflict of interest where a firm of solicitors was acting for a defendant in an action and had also acted for another defendant in a parallel case that was settled. The issue arose in a dispute concerning infringement of a registered design for glassware.

There are two patent cases to note this month. In a dispute over patents for the manufacture of binders, Mr Justice Marcus Smith upheld a decision of the Hearing Officer rejecting revocation applications. He also explained why he did not accept that the Hearing Officer had given inadequate reasoning for his findings on added matter and plausibility.

At the European Patent Office, the Enlarged Board of Appeal published its opinion in the ‘Pepper’ case, in which it found that plants and animals exclusively obtained by means of an essentially biological process are excluded from patentability. The opinion effectively endorses a decision by the EPO Administrative Council and supersedes earlier EBA case law.

At the CJEU, there were decisions on SPCs (in the Royalty Pharma case) and trade marks – in the A v B dispute on the liability of someone who imports counterfeit goods for re-export. In addition, the Advocate General’s Opinion in the John Mills case regarding an application by an agent in their own name was published.

With the deadline for a UK-EU agreement looming, the UK published its draft working text for a free trade agreement. The text includes a section on IP, but notably omits any detail on geographical indications, suggesting that this topic is still under negotiation.

The IP/IT Briefing is part of the Bloomsbury Law Online Service. The full briefing is available here.

Written by James Nurton

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