Five court rulings from last week and why they matter
WIPR reported on several important court rulings last week, including a dispute over the ‘Sky’ trademark at the English High Court and a sweet-related case at the EU General Court. Below we explain why they are important.
Sky’s not the limit?
Mr Justice Arnold of the English High Court referred a series of questions to the Court of Justice of the European Union (CJEU) last week, in a dispute involving media company Sky and a cloud management provider.
Lloyd Lane, solicitor at Freeths, believes that the case is interesting from a bad faith perspective because it “seeks to pin down the limits of what a trademark applicant can legitimately seek protection for”.
While Sky argued that SkyKick had infringed four EU trademarks (EUTMs) and one UK trademark comprising the word ‘Sky’ via the ‘SkyKick’ trademark, SkyKick argued that the media company’s trademarks were registered in bad faith because Sky didn’t intend to use the marks for all the goods and services specified.
Lane explained that after reciting the case law on bad faith, Arnold concluded that it may constitute bad faith (in certain circumstances) to apply for a trademark without any intention to use it in relation to the specified goods and services.
“Arnold is also of the view that this could be the case where there is no intention to use only some of the specified goods and services,” said Lane.
Arnold also noted that the CJEU has had relatively little opportunity to consider what constitutes filing a trademark application in bad faith, while referring questions on bad faith to the court.
Case law on bad faith is “rather mixed” and each case tends to turn on its own facts, said Lane.
“Even if the CJEU agrees with Arnold’s conclusions, we likely still won’t have a one-size-fits-all test for conclusively proving bad faith due to lack of intention to use,” concluded Lane. “Nevertheless, the CJEU’s response will hopefully provide some much needed clarity on whether lack of intention to use can potentially constitute bad faith.”
Grabbing court procedure by the reins
The English High Court’s decision last week in a patent infringement case involving cosmetics brand L’Oréal is one of a handful of cases run under the Shorter Trials pilot scheme, a streamlined procedure aimed at achieving shorter and earlier trials for business-related litigation.
“This shows that the Patents Court is willing to grab court procedure by the horns and rein in those aspects of the UK procedure which have been costly, such as cross-examination,” according to Alex Wilson, partner at Powell Gilbert.
L’Oréal had accused RN Ventures of infringing its patent and registered Community designs through the sale of a range of Magnitone electronic facial skin care devices.
Wilson also believes the case is a “clear indication” by an influential High Court judge that the file wrapper estoppel defence, introduced by the UK Supreme Court in the Eli Lilly v Actavis (pemetrexed) case, will not be a ‘get out of jail free’ card for defendants.
In July 2017, the Supreme Court provided two examples in the Eli Lilly case where patent prosecution history may be relevant when considering whether a variant infringes a patent.
First, according to the decision, “where the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point”, or second, where it would be contrary to the public interest for the contents of the file to be ignored.
In the L’Oréal case, Arnold noted that reference to the prosecution history is the exception, not the rule.
“I understand why it was relied upon in the present case, although I have not accepted RN Ventures’ submissions about it,” he said.
Glass half full for sweet maker
A Russian confectionery company caught up in opposition proceedings relating to two trademark applications has emerged with its (sweet) glass half full.
The EU General Court upheld two decisions of the European Union Intellectual Property Office (EUIPO) relating to confectionery packaging trademarks. Russian candy brand Krasnyiy Oktyabr opposed two figurative trademark applications by Ukrainian sweets company Roshen, both on the grounds of similarity to its earlier registered mark.
One opposition was dismissed by the EUIPO, and the other upheld. Krasnyiy Oktyabr appealed against the dismissed opposition, and Roshen against the upheld one. The General Court upheld both decisions last week.
Affirming the EUIPO’s decision to dismiss one opposition, the EU court found that the distinct word elements of the contested mark offset the conceptually similar elements it had with the earlier mark.
Iain Connor, head of Pinsent Masons’ contentious IP practice, said this case is a good example of how an additional word, in a figurative mark, can substantially reduce the overall similarity of competing marks.
“The decision itself is unsurprising given the fact the lower courts were entitled to reach these findings in the absence of a clear legal error,” he continued.
The court also affirmed the EUIPO’s decision to allow the opposition in relation to the second contested mark. The differences in the word and figurative elements were not sufficient to dispel the similarity that Roshen’s vertical representation of multiple crayfish, in a line, had with the earlier mark.
Connor explained that “conceptual similarities, when dealing with logos, is always a multifactorial assessment, so the decision is entirely contained by its own facts”.
A grave misinterpretation
On Thursday, February 8, the EU General Court handed a win to Sony in a revocation case.
The technology company applied to revoke the EUTM ‘Vieta’, owned by Spain-based Marpefa and covering “apparatus for the reproduction of sounds and images”.
The revocation was dismissed by the EUIPO for some of the goods covered by the trademark but was allowed for others.
Sony appealed to the Second Board of Appeal against the part of the Cancellation Division’s decision that dismissed its revocation application, but the appeal board dismissed the appeal.
Sony appealed to the General Court and said that the protection afforded by the contested mark for “apparatus for the reproduction of sound and images” is too broad and should be divided into subcategories.
In December 2015, the General Court said that the term was not defined “precisely and narrowly”.
On referral, the Fourth Board of Appeal said it had to examine whether there had been genuine use of the trademark in the apparatus category, before finding that there had.
Subsequently, the General Court found that the appeal board had “clearly disregarded” the previous judgment, and annulled the contested decision.
Verena von Bomhard, of Bomhard IP in Spain, said that it was a surprise that the Board of Appeal misinterpreted the General Court’s decision on the term relating to apparatus.
She said: “The only thing that stood out was how incredibly wrong the Board of Appeal was on something that you think should be relatively easy.”
According to von Bomhard, there will be no immediate impact but the reasonable subgroup for “apparatus for the reproduction of sounds and images” will have to be decided.
“The most interesting thing is how could the board misinterpret the court so gravely?”
Red faces for Louboutin reaction?
Some of the reactions to the advocate general’s (AG) opinion in the Louboutin trademark clash may turn out to be overstated, claimed Christian Tenkhoff, senior associate at Taylor Wessing.
Last week, the AG said that the combination of a colour and a shape may be refused trademark protection, with many commentators claiming it was bad news for the shoe maker.
“If the CJEU follows the AG’s opinion, it would merely establish that article 3(1)(e)(iii) of Directive 2008/95 is applicable to trademarks consisting of the shape of a product and seeking protection for a certain colour (or, in other words, combinations of colour and shape),” said Tenkhoff.
However, the CJEU will not decide on the validity of Louboutin’s mark, or whether the red colour does indeed give substantial value to the shoes, he noted.
“The latest figures I saw suggested that the CJEU follows the opinion of the AG approximately 70% of the time,” said Tenkhoff, adding that the court is likely to answer the question as proposed by the AG.
AG Maciej Szpunar stated that a combination of shape and colour that gives substantial value to a product should not be monopolised by a single company.
“While this is certainly bad news for owners of registered trademarks consisting of such a combination of shape and colour, it is by no means a massive leap from the court’s previous decisions.”
See our reaction piece to the AG’s opinion here.
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