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19 February 2018Patents

Four big cases on the horizon: KitKat, Scotch whisky and more

Judicial vacation is over for the Court of Justice of the European Union (CJEU), and it’s set to be another busy week for the judges. WIPR rounds up the big IP cases for the week ahead.

Generic makers take on Gilead

First up, on Tuesday, February 20, is a hearing in a case involving Teva, Gilead, supplementary protection certificates (SPCs) and HIV medication.

The English High Court has asked the CJEU to clarify the interpretation of EU regulation 469/2009, which concerns SPCs.

At issue is Gilead’s SPC based on its marketing authorisation for the product Truvada (tenofovir disoproxil and emtricitabine), a product used to treat HIV/AIDS.

Generics companies, including Teva, have challenged the validity of the SPC, claiming that the basic patent didn’t “protect” the combination of tenofovir, disoproxil and emtricitabine because the basic patent doesn’t mention emtricitabine.

In response, Gilead has argued that the combination falls within the scope of protection of claim 27 of the patent.

The English High Court has asked the CJEU for guidance as it believes that the test to be applied in order to determine whether a product is “protected” by a basic patent remains unclear.

Our sister site LSIPR will have more later this week.

No break for KitKat?

On Thursday, February 22, the CJEU will hear a dispute between confectionery companies Nestlé and Mondelez International over Nestlé’s registration of the 3D four-finger KitKat shape.

The mark, which was registered in 2006, was opposed by Cadbury Schweppes (now Mondelez). While the 3D mark was initially annulled, the European Union Intellectual Property Office (EUIPO) upheld the trademark as valid, finding that the mark had acquired distinctive character through use, after an appeal from Nestlé.

Mondelez appealed against the decision, disputing the conclusion that the trademark had acquired distinctive character throughout the entire EU.

In December 2016, the EU General Court annulled the EUIPO’s decision, holding that the office must reconsider the registration.

According to the General Court, distinctive character through use must be demonstrated in all of the member states concerned.

Although the trademark had acquired distinctive character through use in ten countries, the court said that the EUIPO “could not validly conclude its examination” without coming to a conclusion “regarding the perception of the mark” in other countries and “without analysing the evidence adduced in respect of those member states”.

Mondelez, Nestlé and the EUIPO have each brought an appeal against the decision before the CJEU.

Nestlé and the EUIPO have argued that the General Court erred in finding it necessary to establish that distinctive character was acquired through use in all of the member states concerned.

Mondelez disputes the General Court’s conclusion that the mark had acquired distinctive character in ten member states and the finding that a chocolate bar consisting of “four trapezoid shaped fingers” could be classified as a sweet or biscuit.

Scotch whisky and the “glen”

On the same day as the KitKat hearing, an advocate general at the CJEU will hand down their opinion in a case brought by the Scotch Whisky Association against a German whisky producer.

Scottish whisky has protected EU status—which prevents foreign producers from selling versions of the product that have no link to their place of origin.

The German producer named his whisky “Glen Buchenbach”. The Scotch Whisky Association has taken issue with the use of the word “glen”, which it states indicates that the whisky comes from Scotland.

The referring German court is seeking clarification on the type of connection there must be between a product and a word or other factor for there to be infringement of protected EU status.

And another to look out for in March

Adidas and its ‘three-stripe’ trademark have struck again.

Belgium company Shoe Branding Europe filed applications for a ‘two-stripe’ mark as a figurative sign back in 2009 and 2011.

In 2012, Adidas opposed the mark, citing its ‘three-stripe’ mark.

The EUIPO upheld Adidas’s opposition, finding that there was a risk that the relevant public would establish a link between the marks. It also found that Shoe Branding could take unfair advantage of the reputation of Adidas’s earlier mark.

The Belgium-based company has brought an action for annulment of the EUIPO’s decision, and judgment will be issued on Thursday, March 1.

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22 February 2018   When the average European consumer is confronted with a comparable product bearing the designation ‘Glen’, is the image of ‘Scotch whisky’ triggered in their mind?