Included in this issue: "Improving" the test for assessing patent infringement involving equivalents; Red Bull's Colour Combination Mark Refused; Driving a successful claim for trade mark infringement and more...


"Improving" the test for assessing patent infringement involving equivalents

  • Actavis seeks declaration of non-infringement in relation to a patent owned by Elli Lilly
  • Proposed product does not fall within the literal wording of the patent
  • Supreme Court reformulates the Improver questions and tackles the interpretation of the wording of patent claims

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Red Bull's Colour Combination Mark Refused

  • Validity challenge to trade marks owned by Red Bull
  • Consideration by EU General Court of marks consisting of a combination of colours
  • Uncertainty over when colour combination marks can be validly registered

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CJEU adopts a wide definition of 'act of communication'

  • Claimant requests Dutch ISPs block access to The Pirate Bay website
  • Reference to the CJEU on the scope of the phrase 'act of communication'
  • Does copyright infringement take place when a website provides a system of accessing protected works, even if the works themselves are not available on the website?

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Driving a successful claim for trade mark infringement

  • Guidance from the Court of Appeal on the test for the likelihood of confusion where a trade mark is used in relation to the provision of services
  • Assessment based on the way in which the mark is used, and the message that the use of mark conveys to customers
  • Use of the mark will infringe if it is likely to mislead customers into thinking that the trade mark is being used as part of a commercial connection with the trade mark owner

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Flagging the risk of trade mark infringement on Amazon

  • Amazon seller claims for trade mark infringement and passing off
  • Defendant selling products using claimant's listing details
  • Consideration of whether Amazon listings are generic

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Unanimous Supreme Court decision on criminal liability for parallel imports

Criminal liability for "grey market" goods traders
Added protection for trade mark proprietors
A warning to retailers to check the provenance of the products they are selling

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Scooting to court over joint ownership of designs

  • Collaboration between businesses on the development of designs for motor scooters
  • Lack of clarity in contractual arrangements
  • Consideration of whether parties had agreed to joint ownership of designs arising from the collaboration

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Shape trade marks: 50 shades of black cabs

  • Court of Appeals finds that two trade marks registered in the shape of London taxis are invalid
  • Both marks lacked distinctive character and only consisted of the shape which gave value to the goods in question
  • The case reinforces the difficulty in registering trade marks in the shape of goods

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Heartening decision on database right

  • Owner of ECG screening system asserts database right in pdf generated by the system
  • Claims of infringement when customer switches to new provider of ECG screening services
  • High Court considers whether a pdf can be protected by database right

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How to 'win' copyright protection in TV programme formats

  • High Court guidance on copyright subsistence in television programme formats
  • Emphasises importance of protecting ideas with non-disclosure agreements
  • Court willing to take a hard line on abuse of process where claims have failed in other jurisdictions

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Game for a dispute – enforcing Community Registered Designs against manufacturers of accessories

  • Nintendo seeks to enforce Community Registered Design against manufacturer of Wii accessories
  • When can a supplier of un-branded accessories use images of goods protected by a Community Registered Design?
  • Can a national court grant EU-wide relief against infringers?

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Key contact

Emma Armitage

Emma Armitage

Partner, Dispute Resolution, Intellectual Property
London, UK

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