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20 October 2017Patents

Senior court rulings from this week and why they matter

This week WIPR reported on several important rulings including from Germany’s Supreme Court, Europe’s highest court and the US Court of Appeals for the Federal Circuit. Below we explain why they are important for IP lawyers.

Cautious optimism over 3D marks in Germany

“The German Bundesgerichtshof has yet again shown there has to be a fair chance for so called non-traditional trademarks,” explained Uwe Lueken, partner at Bird & Bird in Germany.

“There has been some reluctance from the beginning to accept registrations for shapes or colours,” he added.

On Wednesday, October 18, Germany’s Supreme Court (Bundesgerichtshof) annulled two decisions by the Federal Patent Court (Bundespatentgericht) that had blocked 3D trademarks for chocolate packaging.

Lueken said that although the decisions are positive for trademark owners, we will have to wait for the written grounds to have a better understanding of the Supreme Court’s position.

“This could take a couple of months,” he stated.

Christian Tenkhoff, associate at Taylor Wessing, echoed Lueken’s view that any optimism over 3D trademarks in Germany could be premature.

“This is a very particular case; so far we have only one sentence addressing the core question at issue, namely whether the shape of the marks in question resulted from the nature of the goods themselves.”

The sentence states that the square shape of the chocolate bar is not an essential (functional) characteristic of the chocolate.

Tenkhoff said that while this statement does have “intuitive appeal”, the main issue will now be clarifying why the square shape is not an essential characteristic.

“Therefore, I believe it is too early to claim that it will generally be easier to register 3D marks in the shape of a product in the future, or to make other assumptions as to the broader impact of the decision on the eligibility of such marks for registration.”

The intrigue of Merck v Merck

Nearly 100 years after the Merck companies became completely separate, Europe’s highest court issued a ruling yesterday, October 19, in a dispute over the ‘Merck’ trademark.

According to Lee Curtis, chartered trademark attorney at HGF, the decision has important consequences for the initiation, management, prosecution and withdrawal of proceedings relating to EU trademark enforcement and the interaction of national and pan-EU trademark rights.

The ruling, from the Court of Justice of the European Union, assessed the application of lis pendens, a provision seeking to avoid contradictory judgments when two courts are dealing with the same case.

First, the court said, the term “same cause of action” under the provision is satisfied where the same parties are contesting identical national and EU marks in different member states.

Aurélia Marie, partner at Cabinet Beau de Loménie, who said the conclusions on “same cause of action” follow those of the advocate-general, said it should be noted that “same parties” can mean companies of the same group, not strictly identical companies.

The court added that where the action concerning the national mark comes first, the second court must decline jurisdiction on aspects of the case relating to the first member state. This only applies to identical goods and services, it said.

However, the court said “same cause of action” is no longer is satisfied when an infringement action is partially withdrawn based on the national trademark of the first member state. This would mean “the actions in question no longer relate to an alleged infringement of a national trademark and an identical EU trademark in the territory of the same member states”.

Luck runs out for gambling TM applicant

A ruling from the General Court on Tuesday, October 17, reveals inconsistency between the EU and the US in their approach to trademarks, one lawyer said.

A company called Murka was refused a trademark for ‘Scatter Slots’, a casino-style game it develops, because the mark applied for was too descriptive.

Esther Gottschalk, partner at Marks & Clerk, noted the company has already secured the trademark in the US and will be frustrated by this decision.

She said the case illustrates the significant differences between trademark law and practice in Europe and the US.

“In particular, over the last few years, we have seen the European Union Intellectual Property Office (EUIPO) become increasingly tough in its stance on more descriptive marks, to the extent that they are now out of line with the US, making it more complicated to protect a new global brand.

“While there is a lesson here for trademark owners in terms of not choosing words and phrases that are not directly descriptive of your products and services, it’s increasingly vital to think beyond your ‘home’ market and have a strategy to ensure your brand is fit for registration across all potential markets—with room to adapt, if necessary,” Gottschalk said.

Jo Eales, associate at Taylor Vinters, said the case is a reminder to trademark owners and lawyers to consider the registrability of a mark in all “important” territories around the world.

“Just because the mark is registrable in one territory, does not mean that it will be in others. Ideally, you need to take a broad view before choosing a name and spending money on trademark filings.”

General Court’s sums add up in calculator case

As WIPR reported on Tuesday, October 17, the General Court backed the EUIPO in dismissing an opposition filed by Moravia Consulting against a calculator-related trademark, despite claims that Moravia had used the same mark in the Czech Republic.

In support of its opposition against the ‘SDC-444S’ word mark, Moravia supplied a previous order for calculators which had used the ‘SDC-445’ name.

Andreas Renck, partner at Hogan Lovells, said the judgment is completely in line with previous case law.

“The local and limited use of an unregistered trademark does not allow the opponent to challenge an EU trademark for the whole EU, as article 8(4) of the EU trademark regulation requires the use of that sign to be of more than local significance.

“Moreover, it is also constant case law of the General Court and CJEU that the opponent needs to provide at least some of the relevant evidence (including evidence on the national law that is relied on to substantiate such an unregistered right) before the Opposition Division, and late filing would be excluded,” Renck said.

The grip of Alice continues to tighten

A decision by the US Court of Appeals for the Federal Circuit shows the court continues to focus on whether patent claims improve computer functionality itself or whether the claims are specific and have enough technical detail to be an inventive concept, according to one lawyer.

On Monday, October 16, the court affirmed a district court decision that found seven patents belonging to patent licensing company Secured Mail Solutions (SMS) invalid under the Alice Corp v CLS Bank ruling.

This was despite SMS stating that the decision in Enfish v Microsoft—which adopted a more permissive approach to computer-related technology—meant its patents should not be invalidated.

Christa Brown-Sandford, partner at Baker Botts, said the decision reiterated the section 101 analysis from the developing jurisprudence at the Federal Circuit.

“Even though the Federal Circuit has found claims in certain factual scenarios to be patent-eligible, it reserves non-abstract idea determinations to claims that provide a technical improvement to computer functionality.

“The claims of SMS include such limitations as affixing mail identification data, storing a verifying portion of the mail identification data, receiving an authenticating portion of the mail identification data, and providing the mail verification data when the authenticating portion corresponds to the verifying portion.

“According to the court, using an identifier in the claimed process to make the process more efficient does not render an abstract idea less abstract,” said Brown-Sandford.

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