REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL …decisions; i.a. C-202/05 (“Yissum”) where the European Court of Justice (ECJ) ordered that a product according to the Regulation

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CONTENTS:

SPC: Court of Justice makes room for new uses of known compounds 2

Is use of an EU trademark in one EU member state sufficient? 4

Goliath on drugs? The Pitfall of Being Best 6

Patent protection in the Faroe Islands and Greenland 9

Solvay in CJEU: Cross-border injunctions are back, if preliminary 10

How long is it possible to put off a claim for a preliminary injunction? 12

Three-dimensional trademarks – UK court case regarding the tile game SCRABBLE 13

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EDITORIAL BOARD: Niklas Mattsson, Mattias Pierrou, Sidsel Hauge, Peter Kenamets and Magnus Hallin

AWA IP Review contains comments and analyses relating to the very latest developments in IP law. All the articles are written by IP specialists at Awapatent who have extensive experience in a number of key fields. To become a subscriber, visit www.awapatent.com or simply e-mail your name and e-mail address to [email protected].

REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW #1 2013

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SPC: Court of Justice makes room for new uses of known compounds

In decision C-130/11 (“Neurim”) handed down in July 2012, the Court of Justice of the European Union (CJEU) decided that an SPC (Supplementary Protec-tion Certificate) could be issued for a new use of melatonin based on a marketing authorisation (MA) that was in fact not the first MA for melatonin. On the face of it, the decision seems contrary to the condi-tions of Article 3 of the Regulation (EC) No 469/2009, and in particular to the condition of Article 3(d) that the MA relied upon must be the first authorisation to place the product on the market. The decision further seems to be inconsistent with earlier decisions; i.a. C-202/05 (“Yissum”) where the European Court of Justice (ECJ) ordered that a product according to the Regulation (Article 1(b)) should mean that “…in a case where a basic patent protects a second medical use of an active ingredient, that use does not form an integral part of the defini-tion of the product”.

Thus, until last year, the dogma was that an SPC cannot be granted based on a later MA approved for another indication than that of the first MA for the same product.

The facts of the case in brief: melatonin was ap-proved for fur growth in mink by an old Dutch MA for the commercial product Regulin. Neurim Pharmaceu-ticals Ltd later applied for an SPC in e.g. UK for their product, Circadin, comprising the same active ingredi-ent, but based on a new MA approving the product for the treatment of sleeping disorders in humans. The application for an SPC needed to refer to the new MA, because relying upon the old Dutch MA would result in an SPC having no duration at all (based on the calculation laid down in Article 13 of the Regula-tion). The SPC application was, however, rejected based on the fact that the new MA was not the first MA relating to melatonin. Neurim then challenged the rejection before the English High Court of Justice, which in turn referred a number of questions to the CJEU for a preliminary ruling.

The CJEU ruled, in item 1:“Articles 3 and 4 of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products must be interpreted as meaning that, in a case such as that in the main proceedings, the mere existence of an earlier market-ing authorisation obtained for a veterinary medicinal product does not preclude the grant of a supplemen-tary protection certificate for a different application of the same product for which a marketing authorisation

has been granted, provided that the application is within the limits of the protection conferred by the basic patent relied upon for the purposes of the application for the supplementary protection certifi-cate” [emphasis added].

The issue at stake here is obviously the duration of the SPC, since applicants will either have an SPC granted, or obtain a longer SPC duration, if a later MA can be relied upon. In this regard, Recital 31 of the decision is also of interest:“Article 13(1) of the SPC Regulation is to be inter-preted as meaning that it [by reference to the first authorisation to place the product on the market] refers to the MA of a product which is within the limits of the protection conferred by the basic patent relied upon for the purposes of the application for the SPC.”

It would appear that the above Item and Recital can be summarised into two criteria: 1) the application of the (later) MA relied upon must be within the scope of the patent, and 2) this later MA must be the first which is within the limits of the basic patent relied upon. These criteria have to be met in order to rely upon a later MA, but they do not necessarily come together, as it is possible to have one without the other.

Thus, based on these two criteria, at least one relevant test (when relying upon a later MA) seems to be whether it can be ruled out that the product approved in the first MA is within the limits of the basic patent relied upon. And, if ruled out, the later MA for the same product may be relied upon, pro-vided it is the “first” MA for the same product within the limits of the basic patent.

While “Neurim” relates to a so-called “second medi-cal use” basic patent, the reasoning should be valid for any patent, since the questions as answered by the CJEU do not explicitly limit the nature of the basic patent involved. However, whereas it is fairly straight-forward to evaluate whether or not a medicinal product approved for the treatment of, for example, headache is protected by a second medical use patent (e.g. claiming the use of the product for treating arthritis), the situation is not as straightfor-ward if the basic patent relied upon claims a specific formulation of the product, e.g. the product incorpo-rated in a medical device carrier described as usable for treating arthritic diseases. In this hypothetical scenario, the question would rest with national PTOs to decide whether or not such a medical device carrier patent would also protect an application of the product for treating headache.

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Another situation can arise resulting in a type of “overlapping protection” that was not possible before. Assume that a first patent protects compound A as such. SPC1 is granted for the product compound A based on a first MA1 approved for treating hyperten-sion. One year later, a second basic patent is issued to a different registered proprietor in which compound A is claimed for use in the treatment of ulcers (i.e. a “second medical use” claim). Compound A is further approved for treatment of ulcers in MA2, whereupon an SPC2 is applied for based on the second patent and MA2. Following the reasoning in “Neurim”, SPC2 should be granted, since all the conditions of Article 3 in the Regulation are met.

This leads to a situation where both SPC1 and SPC2 are valid and cover compound A. Whereas SPC1 covers both applications and any subsequent applica-tion of the product (cf Article 4 of the Regulation), SPC2 only covers the later application by virtue of the limits of the protection conferred by the second patent.

Thus, “Neurim” has definitely changed the paradigm of SPC practice. At the same time, by answering one question, “Neurim” has left us with other questions (re)opened.

Reported bySidsel Hauge,

European Patent Attorney, Partner, Copenhagen office

Article 3Conditions for obtaining a certificate

A certificate shall be granted if, in the Member State in which the application referred to in Article 7 is submitted and at the date of that application:

(a) the product is protected by a basic patent in force;

(b) a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Di-rective 2001/83/EC or Directive 2001/82/EC, as appropriate;

(c) the product has not already been the subject of a certificate;

(d) the authorisation referred to in point (b) is the first authori-sation to place the product on the market as a medicinal product.

Article 4Subject-matter of protection

Within the limits of the protection conferred by the basic patent, the protection conferred by a certificate shall extend only to the product covered by the authorisation to place the corresponding medicinal product on the market and for any use of the product as a medicinal product that has been authorised before the expiry of the certificate

Article 13Duration of the certificate

1. The certificate shall take effect at the end of the lawful term of the basic patent for a period equal to the period which elapsed between the date on which the applica-tion for a basic patent was lodged and the date of the first authorisation to place the product on the market in the Community, reduced by a period of five years.

2. Notwithstanding paragraph 1, the duration of the certificate may not exceed five years from the date on which it takes effect.

Johanna Karlqvist, European Patent Attorney,

Stockholm office

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EU trademarks must be used within 5 years from their registration in order to remain valid and provide protection against third parties. When the EU trade-mark was first launched, it was decided, in order to secure a successful system, that the requirement of use “within the Community” would be seen as satisfied, if a mark was being genuinely used in just one member state. This was decided in a Joint Resolution by the EU Commission, and the OHIM decided to follow this decision in its practice.

Since then, the EU has been enlarged through the addition of a large number of member states, includ-ing small states like Cyprus and Malta, and for years, there has been a discussion on whether use in just one state really should be sufficient to maintain the protection of an EU trademark. The discussion has intensified after the Court of Justice of the European Union (CJEU) decided that a joint resolution is not a legally binding document.

In an opposition case before the Benelux IP Office (BOIP), in which the opponent based itsopposition on an earlier registration of the mark (ONEL), the applicant challenged the genuine use of the earlier mark. It was agreed that use had in fact been made of ONEL, but only in The Netherlands. The opposition was dismissed, since BOIP did not consider such use of the earlier mark sufficient to render protection to the registration of ONEL. An appeal was filed, and the Appeal Court in The Hague referred four ques-tions to the CJEU.

The questions related to whether use of an EU trademark in one member state would suffice to fulfil the requirement of use, and, if not, whether use in one member state could by definition never suffice, and furthermore, if this question is answered in the affirmative, what requirements do apply concerning the territorial scope of the use, or whether assess-ment of use should be carried out without reference to the territorial borders of the individual states.

The CJEU considered all four questions together and, in its judgment C-149/11 of 19 December 2012, stated that “the territorial scope of use is not a sepa-rate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors” (para. 36 of the judgment).

In its decision, the CJEU emphasised that the purpose of community trademarks is to offer conditions in the internal market that are similar to those obtainable in a

national market. Giving particular significance to the ter-ritories of member states would frustrate this objective and be detrimental to the unitary character of the EU trademark. Considering this purpose and the fact that the wording used in the Regulation is “in the Commu-nity”, the CJEU further stated that the territorial borders of the member states should be disregarded.

The CJEU considers that in some cases, use in just one member state would in fact suffice for the mark to be used “in the Community” and provides the example of where the market for the goods or ser-vices of such EU trademark is restricted to the territory of just one member state.

Following this example, the CJEU refrains from setting a de minimis rule that “an EU trademark should be used in a substantial part of the territory” or similar. The CJEU simply maintains that use should be genuine and that such qualification depends on the characteristics of the product or service con-cerned in the corresponding market. The CJEU refers to prior case-law and the fact that all relevant factors should be included when making an assessment on whether use is genuine, including characteristics of the market concerned, the nature of the goods or services protected and the territorial extent and scale of the use, as well as its frequency and regularity.

ConsequencesLooking at the CJEU decision from a trademark owner’s or a practitioner’s perspective, in some situations it might certainly have been easier if the court had set a more defined rule on the territorial extent of use of a CTM. As one of the intentions behind the EU community trademark system was to provide small and medium-sized companies with easy and affordable trademark protection for the entire internal market, the statement of use in one member state sufficing as genuine use was perfectly reason-able. While entailing a risk of cluttering in the register, this could nevertheless be dealt with by other means, for example stricter rules on the allowed wording of lists of goods and services.

However, considering the expanding number of member states, the size of certain member states, the availability of national trademark systems and the fact that an EU trademark does, in fact, block other registrations of the trademark throughout the entire EU, if a mark is being used solely in, for example, Malta, it appears more appropriate to make an open assessment – bearing in mind all relevant factors – whether such use is “genuine”.

Is use of an EU trademark in one EU member state sufficient?

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Making an assessment of whether use is genuine can take into account the development of trademarks, goods and services as well as of markets, and so the decision provides us with a more smoothtool than if the CJEU had decided on a minimum amount of territory. It is also a more efficient tool than if use in just one member state had been deemed sufficient by definition.

Now, we need to see how the national PTOs and the OHIM will interpret the CJEU decision. Even though national boundaries are not relevant, it will be neces-sary to consider the markets involved and therefore also the territorial scope of the markets and of the use. In this sense, the decision opens up the possibil-ity of different national interpretations of when use is genuine, even though all national PTOs will still follow the guidelines from the Ansul decision C-40/01.

Personally, I would be careful in relying too much on the statement from the CJEU that use in just one member state is enough. The statement was qualified inasmuch as it referred to situations in which the market for certain goods or services would in fact be limited to one member state. One should also bear in mind that the territorial scope of use should, by the nature of the marks, be greater for an EU trademark than for national trademarks. This last consideration corresponds very well with the intention behind the EU trademark system of giving companies easy and affordable protection in the entire internal market.

From a practitioner’s perspective, the decision was desirable, but it does not bring clarity to all aspects of use of EU trademarks. In other words, we will prob-ably see a number of “when use is genuine”-cases in the near future.

For a trademark owner, it will, as always, be impor-tant to use one’s mark and secure documentation of the use. For EU trademarks, it will now also be important to define the market, and particularly its territorial scope, in order to make certain that one’s trademark is used as extensively as possible within that particular market.

Reported by Anette Rasmussen,

Attorney at Law,Copenhagen office

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IntroductionNever before has the CJEU delivered a judgment finding abuse of a dominant position in the pharmaceu-tical sector. The case (C-457/10), some thirteen years in the making, is interesting in that it shows that one very successful product can effectively put the manu-facturer in a dominant position. From there, it is easy to be led astray when protecting intellectual assets.

BackgroundAstraZeneca (AZ) is a pharmaceutical company with gastrointestinal disorders as one of its prime areas of business. One of AZ’s most successful products in this field is named Losec (Prilosec in the US).

This case deals with AZ’s actions in Europe in con-nection with the Marketing Authorization (MA) and Supplementary Protection Certificate (SPC) for Losec. But first, a few words on competition.

Healthy CompetitionIt should be pointed out that competition is consid-ered healthy to business, and that actions that serve to distort free competition are generally not accepted. Intellectual property rights are essentially tools for reducing competition. They are, however, permitted, as (most notably in the case of patents) they protect investments in research that would otherwise not have been made. Thus, it is perfectly legal to use intellectual property rights to attempt to limit or eliminate competition.

When a company finds itself in a dominant position, however, the situation is less clear-cut. While it is perfectly acceptable to hold a dominant position, a special responsibility applies in such instances; a special duty not to distort competition. Thus, certain actions that would be acceptable for a smaller com-pany to take are considered abusive when adopted by a company in a dominant position, because of the potentially greater negative impact of these actions.

The dividing line between what such a company may or may not do is called “competition on the merits”. As we will see, not only actions themselves, but also the intent behind them, are important factors in determining whether or not certain actions remain on the right side of that line.

The ProcessIn 1999, certain producers of generic medicinal products complained to the European Commission (EC) about specific actions taken by AZ. Some six years later (2005), the EC ruled that AZ had abused

its dominant position on two accounts. Firstly, by misleading representations to various EU authorities in order to receive or maintain SPC rights. Secondly, by deregistering an MA with the intent of blocking generic market entry and restricting parallel imports. The EC decision carried with it a fine of EUR 60,000,000.

AZ appealed the decision to the General Court, which upheld the decision but reduced the fine somewhat (to EUR 52,500,000). Once again, AZ appealed the decision and, as indicated in the introduction above, the CJEU upheld the decision and issued the final ruling in this matter.

Three issues are of particular interest in this case: the definition of the relevant market, the misrepresenta-tions by AZ, and the act of deregistration of the MA.

Dominant Position?Without going into detail about the assessment of a dominant position, the case is interesting in one respect, namely in its definition of the relevant product market.

As stated, Losec is a drug that treats gastrointestinal disorders, in this case gastric ulcers. What differenti-ated Losec, at least at time of the events of this case, from the competition was the way in which it did this.

Most pharmaceutical products for gastric ulcers share the same objective, namely to reduce production of gastric acid. Losec is a so-called “proton pump inhibitor” (PPI). It acts by inhibiting the gastric proton pump (the terminal stage of gastric acid secretion), thereby reducing gastric acid secretion by up to 99 per cent. In contrast, another type of medicinal product with the same objective, so called “H2 blockers” (H2), acts by blocking the signals generated by histamine receptors on cells that are responsible for gastric acid secretion. H2s usually begin working within one hour from administration, and typically last for about 12 hours. PPIs have a delayed onset and can last up to 24 hours with effects lasting up to three days. In short, PPIs are more effective than H2s.

Because of the differences between Losec and competing products such as H2s, the CJEU upheld that PPIs in themselves should be regarded as the relevant product market. This is, of course, interesting in that, while being the dream of every manufacturer, a blockbuster product like Losec can actually estab-lish its own separate market. Within this market, of course, the manufacturer will be in a dominant position, but the special duty incumbent on a com-

Goliath on drugs?The Pitfall of Being Best

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pany in a dominant position reduces its room to manoeuvre. In some ways, the castle turns to sand.

MisrepresentationWhen applying for SPC protection, a company must disclose the date of the first MA within the European Economic Area (EEA). This date is a decisive factor for every national patent office when deciding on the term of SPC protection. The facts of the case show that AZ received its first MA in France on 15 April 1987. In several SPC applications throughout Europe, however, AZ disclosed another date, in 1988, as the date of the first MA. That AZ was indeed aware of the actual first MA is supported by internal documents found at AZ. In its explanation for this misrepresenta-tion, AZ stated that it had interpreted the MA proce-dure in another manner, hence the much later MA date indicated by AZ. The CJEU, however, did not accept this defence and ruled the misrepresentation to be an abuse of AZ’s dominant position.

What is interesting in this case is not the morality of AZ’s actions, but where the line is drawn between misrepresentations constituting an abuse of dominant position and those that are not. Will any misrepresen-tation be deemed abusive? I think not. Nor does the CJEU; it states that every misrepresentation must be assessed in accordance with the facts of the specific case at hand. What, then, about patent applications themselves? Any applicant essentially represents that the subject matter of the application is patentable. Knowing that a significant number of patent applica-tions actually turn out to concern non-patentable subject matter, this statement is actually a misrepre-sentation in many instances. In most instances, it would be hard to argue that such misrepresentation would amount to an abuse of a dominant position. However, what if it could be proven that the applicant had serious doubts about the patentability? Then couple this with proof that the applicant sought to use the application as a deterrent against competi-tors. This would make it more difficult, and it cannot be ruled out that such behaviour could be held as an abuse of a dominant position. Why? Simply because it is difficult to understand why a company would invest money in filing for a patent which it “knows” will most probably not be granted. A company in a dominant position waving a “patent pending” flag in the faces of its smaller competitors will appear Goliath-like. It will have a very different effect than when a smaller company does the same thing; not least considering the (usually) strong litigation power of the dominant company. Considering the special responsibility placed upon such companies, one

cannot rule this out completely. For now, all we know is that there is a line somewhere, but we are not sure where it is drawn.

Deregistration of MAIn order to obtain an MA, the applicant must provide results of different pharmacological and toxicological tests and clinical trials. For a defined period of data exclusivity, only the holder may use the results of those tests and trials. After the period of exclusivity has ended, any third party (in particular generic manufacturers) may subsequently rely upon these data. However, such reliance can only be made as long as the MA is still in force.

According to the facts of the case, AZ deregistered its MA for Losec in several countries. Why would this amount to abuse of a dominant position? The issue here is whether the actions that AZ took crossed the line of “competition on the merits”. Surely, it must be up to the company to decide whether it wishes to maintain a MA or not (after all, it’s the company that pays the bill). Or is this not the case?

The answer is: it depends. In most circumstances, such behaviour would be permissible. However, the problem for AZ focused on intent. Deregistration of an MA after the period of exclusivity has ended distorts competition. It prohibits competitors from relying upon results of tests and trials, making competitor entry into the market more time consuming and more costly.

In its defence, AZ referred to the burden of costs of maintaining the MA. Usually, this would be an objec-tive justification for deregistration. However, the facts of the case show that AZ brought up this defence only before the General Court, not during the stage at the EC. Moreover, and here is where the intent comes into play, internal documents of AZ did not mention the financial burden when discussing the commercial strategy underlying the request for deregistration. These factors were sufficient for the CJEU to hold that deregistration was made, not to avoid costs, but to put a spoke in the wheel of generic medicinal producers. The CJEU also confirmed that the special responsibility laid upon a company with a dominant position prohibits it from using regulatory procedures to make life more difficult for competitors.

In the end, it all came down to intent and AZ got it all wrong from the beginning. If we assume that AZ could have proven that there was, indeed, some substance in its claim that cost considerations lay behind the decision to deregister, it would most likely have been accepted.

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The important lesson to draw from this part of the case is that any action taken by a company in a dominant position that is likely to distort competition must be very well founded on objective justifications.

Final thoughtsThe outcome was expected. However, we can still learn. Firstly, being best can have its drawbacks; one product alone can effectively put you in a dominant position. Secondly, once there, you will not be able to do the things you usually do to kill the competition. Thirdly, you will have to be much more careful in the decisions you make as they are likely to affect smaller competitors. Intent will be very important.

As a side note, the decision could have serious effects. Pharmaceutical companies invest consider-able amounts in research; a financial risk. Possibly abusing a dominant position when protecting intellec-tual assets increases that risk. Investors will have to be willing to accept this greater risk when investing in such companies. Generic producers, in comparison, have very little (or no) such costs. They are also able to enter an already established market and make much better predictions about consumer demand. This could make investors more prone to invest in generic producers instead, possibly affecting invest-ments in research in the medicinal field.

While it cannot be stated with certainty, nor can it be ruled out that protective measures based on good intentions could ultimately prove counter-productive. We can only hope that this will not come true.

Reported by Mattias Karlsson, Attorney at Law,

Gothenburg office

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Patenting in the Faroe Islands and Greenland is becoming more and more important, due to a grow-ing economic interest in the Arctic region.

However, companies who want to pursue their busi-ness opportunities and protect their intellectual prop-erty rights in the Faroe Islands and Greenland should know that patent protection in these two provinces can only be obtained by filing a national Danish patent application or, alternatively, by entry into Denmark in the national phase under the PCT provisions.

The reason is that the Faroe Islands and Greenland are autonomous provinces within the Kingdom of Denmark, and that their patent legislation is not in full conformity with the current Danish Patents Act. One of the major differences in this respect is the lack of patent protection in the Faroe Islands and Greenland conferred by granted European Patents. Despite the fact that Denmark is a Contracting State to the EPC, a granted European Patent subsequently validated in Denmark does not confer any patent rights in the Faroe Islands or Greenland.

Hence, in order to obtain valid patent rights in the Faroe Islands and Greenland, it is essential to file a national Danish patent application. This may be achieved via, for example, the PCT system by means of a Danish entry – not a European entry! – into the national phase. However, if patent protection in the Faroe Islands is needed, a special time limit of 20 months must be observed, calculated from the international filing date (or, if priority is claimed, after the priority date), because the Faroe Islands has not acceded to Chapter II of the PCT. The corresponding time limit for the rest of Denmark (i.e. including Greenland) is 31 months.

The substantive examination of Danish national phase patent applications relies, when possible, on the written opinion and/or the International Preliminary Report on Patentability issued during the international phase. Also, in most cases the practice of the Danish PTO in relation to the assessment of patentability of an invention corresponds to that of the EPO. Furthermore, it has been observed that, in some cases, the DKPTO will await a decision from the EPO in a corresponding case before issuing its own Office Actions.

The costs associated with the filing of national Danish patent applications are relatively low, as no examina-tion fees need to be paid. Moreover, it is possible for the applicant to request that the prosecution of a Danish patent application should be carried out in

English. Once the DKPTO has decided that the patent application can lead to a patent, a translation of the claims is required. However, if protection in the Faroe Islands is needed, the Danish patent must be trans-lated in its entirety.

For Danish patent applications, it is possible to file divisional applications until grant of the parent appli-cation. In other words, the Danish Patents Act does not contain provisions similar to those of the EPC, mandating that divisional applications have to be filed within special time limits. Lastly, the Danish Patents Act contains provisions for filing derived applications based on new subject matter disclosed by the appli-cant during examination. The date when the new subject matter was disclosed for the first time be-comes the filing date of the derived application, and it is possible to claim priority from these derived appli-cations. The applications may be considered as being comparable to US continuation-in-part applications.

Patent protection in the Faroe Islands and Greenland

Reported by Mikael Mikkelsen,

Patent Attorney, Copenhagen office

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BackgroundDespite sixty years of European harmonisation efforts, our continent remains fragmented in certain respects; the enforcement of IP rights is one such example. Until recently, the holder of a European patent infringed by multiple parties in different European countries faced a number of difficulties, or at least legal delicacies, from day one. The reasons for this were:

• the “bundle” character of a granted European patent, and

• the established “better practice” of pleading invalidity as a defence to an infringement suit.

Council Regulation (EC) No 44/2001 succeeded the 1968 Brussels Convention and will itself be suc-ceeded in 2015 – with very minor substantive chang-es – by Regulation (EC) No 1215/2012. The regula-tion makes it possible to sue a legal or natural person in a court outside his or her domicile in civil and commercial matters. This applies with the important exception laid down in Art. 22(4): validity of patents, trademarks and other IP rights.

For a few years around the turn of the century, some national courts – mainly in Germany and the Nether-lands – ordered permanent cross-border injunctions. This practice ended in 2006 with the preliminary rulings by the Court of Justice of the European Union (CJEU) in the famous cases GAT v. LuK (C-4/03) and Roche Nederland BV v. Primus (C-539/03). The CJEU accepted that counterarguments based on invalidity do not change anything in a national patent or trademark register unless revocation is explicitly requested. Yet, courts will hesitate to grant an injunc-tion based on an IP right that isn’t clearly valid – and this includes the courts of “bifurcated” systems like the German, at least for permanent injunctions. The CJEU held that any national court seized with a cross-border infringement action, where validity is argued, will form or implicitly form an opinion on the validity of foreign IP rights, in breach of Art. 22(4) of the Regulation, and therefore shall not have jurisdic-tion, not even in the infringement case (see points 26 and 27 of the judgment in C-4/03).

These rulings were debated a great deal in the years that followed; many felt the CJEU had been wrong to dismiss the argument (inspired by rules in the current German system) that such an indirect judgment on the validity would have effect between the litigants only, and not erga omnes. The CJEU rulings actually gave cross-border infringers a more efficient defence

than before; since a plea of invalidity would force the court to refuse jurisdiction, cross-border enforcement became pointless at a stroke. Patentees again had to sue multiple infringers in multiple courts, if they could afford it.

Solvay v. Honeywell (C-616/10)Solvay SA sued a number of European Honeywell subsidiaries for infringement of several national parts of European patent EP 0 858 440 before a Dutch court in 2009. Solvay claimed its patent covered the fluorine product HFC-245, which was marketed by Honeywell Belgium NV in northern and central Europe and by two other Honeywell companies in the whole of Europe. Solvay requested preliminary injunctions in the relevant countries, pending the final decision in the main infringement action. Solvay was probably aware that the foreign parts of the main proceedings would be tried before foreign courts.

Like anyone familiar with the “GAT/LuK” mechanism, the Honeywell companies pleaded that EP 0 858 440 was invalid and were perhaps expecting the Dutch court to dismiss the infringement action before it was even tried on the merits. The court did not. Instead, it stayed the proceedings and referred six questions to the CJEU, including:

2. Is Article 22 (4) of Regulation No 44/2001 applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22 (4) of (that) Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against in-fringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibil-ity exists that the patent invoked would be declared invalid by the competent court? [emphasis added]

The CJEU found that this was not the case, and provisional measures, as allowed by Art. 31 in the Regulation, were indeed available. While the stringent interpretation of Art. 22(4) adopted in GAT v. LuK had been justified by a wish to avoid conflicting decisions, the CJEU considered that in the present case, there was “no risk of conflicting decisions [...],

Solvay in CJEU: Cross-border injunctions are back, if preliminary

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since the provisional decision taken by the court before which the interim proceedings have been brought will not in any way prejudice the decision to be taken on the substance by the court having jurisdiction under Article 22(4) of Regulation No 44/2001.”

Hence, the Dutch court was found competent to order a preliminary injunction and also did so in the present case. From recent activity in the official file, it would appear that the Solvay and Honeywell case will go on to main proceedings, and it will be interesting to follow how the court manages the geography of any invalidity actions filed in response: for example, will the court stay the main infringement action or not?

The decision in C-616/10 tells us that a Swedish or Danish court in the same situation can order prelimi-nary relief such as preliminary injunction, seizure of infringing goods or disclosure of information for tracking the infringing goods, in all EU/EFTA countries where the invoked patent is in force. It is important to say that this is based on the current law and is in no way due to the Unitary Patent package yet to be implemented.

Reported by Anders Hansson,

European Patent Attorney, Stockholm office

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In Sweden, unlike certain other countries such as Germany, there are no clear cut criteria for the granting of a preliminary injunction in IP cases, nor an exact time limit for the submission of such a claim. The assessment is based on balancing conflicting interests. On the one hand, it is in the proprietor’s interest that the value of the IP is not destroyed by continuing infringement. On the other hand, the alleged infringer has an interest in ensuring that his business is not unduly restricted. With respect to time, case law is rather “generous” to the IP proprie-tor. There are several examples of preliminary injunc-tions rendered one year or even several years after the commencement of the infringement dispute.

Precedents are sparse. Therefore, two recent court cases were welcomed. They provide more guidance in the interpretation of the law. The first case is PC Electric GmbH vs. ABB AB1, and the second is Thule Sweden AB vs. Mont Blanc Industri AB2.

The timeline in PC Electric vs. ABB was as follows. The allegedly infringing products were launched in August–September 2010. PC Electric sent a cease and desist letter on 30 November 2010. Correspond-ence between the parties took place on and off until 8 February 2011. An infringement action, with a claim for a preliminary injunction, was submitted to the Court on 12 September 2011.

The City Court granted a preliminary injunction. In its decision, the City Court said that neither the statute or the preparatory works support the view that a claim must be submitted within a certain period of time to be accepted. According to the Court, it is problematic to generally require promptness, because this could lead to the dilution of the value of the intellectual property. Furthermore, the proprietor may feel called upon to initiate legal proceedings on the basis of incomplete data. In any case, it was decided that the actions of PC Electric had not taken too long. The decision was confirmed by the Appeal Court.

In the second case, Thule Sweden submitted an infringement action on 22 October 2010 with the Stockholm City Court. Written and oral preparations were concluded and the main hearing was scheduled for January 2013. Thule Sweden subsequently submitted a further claim for a preliminary injunction on 7 August 2012, i.e. almost 22 months after initiat-ing the dispute. The Court stated that it would be disproportionate to grant a preliminary injunction at this stage of the proceedings. For one thing, the main hearing was close at hand. Furthermore, the presen-

tation of the claim for a PI late in the proceedings indicated that Thule Sweden did not have a strong interest or need of a preliminary injunction. The Court rejected the claim.

PC Electric vs. ABB is a typical case, well in line with previous Swedish case law. It confirms the relatively proprietor-friendly approach with respect to preliminary injunctions, especially the lack of an ultimate deadline before which the claim has to be put forward.

Thule Sweden vs. Mont Blanc Industri is more inter-esting. Decisions like this one, where the time issue has been analysed in detail and was the decisive factor, are rare. This provides an indication that this factor may be viewed as more important in the future. Thus, a tendency more similar to the German practice of refusing to accept “late” submissions could become more frequent in Sweden, despite the absence of an exact rule.

1 Stockholm City Court Decision of 26 April 2012, case T 12729-11 and Svea Court of Appeal, Decision 10 September 2012, case Ö 4315-12

2 Stockholm City Court Decision of 22 November 2012, case T 16320-10 (not appealed)

How long is it possible to put off a claim for a preliminary injunction?

Reported by Bo Davidsson,

Attorney at Law, Partner, Stockholm office

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IntroductionIn a case from the High Court of Justice in England and Wales, Mr Justice Arnold has decided that a UK three-dimensional trademark registration for the tile game SCRABBLE is invalid, on the ground that it is not a sign, nor capable of graphic representation.

BackgroundThe boundaries of trademark protection in Europe have been extended during the past decade. How-ever, two conditions are very difficult to overcome in trademark law with regard to non-traditional trade-marks. These conditions are i) the requirements of graphical representation and ii) the trademark’s function as a sign distinguishing the goods or services of one company from another.

Article 2 of the EU Trademark Directive 2008/95/EC states that a trademark may consist of any signs capable of being represented graphically, particularly words (including personal names), designs, letters, numerals, and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The Court of Justice of the European Union (CJEU) has established that the list of examples of signs listed in Article 2 is not exhaustive. A trademark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically.

Facts in the case from the UK High Court of Justice The decision from the UK High Court of Justice shows the difficulties regarding trademark protection for

three-dimensional trademarks. The court case con-cerned a three-dimensional trademark consisting of tiles of the tile game named SCRABBLE. The three-dimen-sional mark was registered in the UK for computer game adaptations of board games, class 9; for board games, class 28; and for organization of competitions and exhibitions, all relating to board games, class 41. The holder of the registration is J.W. Spear & Sons Limited. The UK registrar had accepted the tile mark for registration on the basis of acquired distinctiveness.

The holder of the abovementioned trademark and 3 affiliated companies, including Mattel, Inc., sued the company Zynga for trademark infringement of 4 registered trademarks, of which the tile mark was one. Zynga then contended that the tile mark was invalid according to Article 2 of the EU Trademark Directive for the following reasons:

i) the tile mark covers an infinite number of permuta-tions of different sizes, positions and combinations of letter and number;

ii) the tile mark does not identify the precise shape of the tile, in particular the extent to which the corners are rounded, or its dimensions;

iii) the colour “ivory” is not sufficiently precisely speci-fied.

Justice Arnold states in the decision that the tile mark does not function as a sign distinguishing goods or services of one company from another. The tile mark covers an infinite number of combinations of different sizes, positions and combinations of letter and num-bers on a tile. The size of the tile is not specified, nor is the colour precisely specified. The mark covers a multitude of different appearances of tile. The mark attempts to claim a monopoly on all ivory-coloured tile shapes which bear any letter and combination on the top surface. To uphold the registration would entail an unfair competitive advantage. Furthermore, the mark does not comply with the requirements of graphical representation, since the representation is not clear, precise, comprehensible or objective. Furthermore, it is very difficult for competent authorities or competitors to determine the scope of protection of the tile mark.

The plaintiffs lost the case, even though the tile mark had acquired distinctive character through use.

This means that Article 2 is an absolute obstacle. Justice Arnold made reference in his decision to the CJEU decision C-321/03 Dyson. It is evident that

Three-dimensional trademarks – UK court case regarding the tile game SCRABBLE

The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the roman alphabet and a numeral in the range 1 to 10.

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Justice Arnold was influenced by this case when reaching his decision.

In Dyson (C-321/03), the applicant tried to register the mark below. The trademark application aimed at protecting all conceivable external shapes of a trans-parent collecting bin of a vacuum cleaner.

The CJEU stated in Dyson that, given the exclusivity inherent in trademark right, the holder of a trademark relating to such a non-specific subject matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since the holder of the trademark would be entitled to prevent competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface. Furthermore, the CJEU stated that the transparent bin was a mere property of the product and does not constitute a sign within the meaning of Article 2.

ConclusionThe concept of unfair competitive advantage was crucial in both of these cases, because if trademark protection of a three-dimensional mark is granted, the protection is everlasting and the shape is monopo-lized forever. This is the reason why design protection and patent protection is limited in duration, so as not to unduly monopolize designs and inventions beyond an equitable time.

As long as the requirement for graphical representa-tion exists, the possibilities for protection of non-traditional trademarks will be restricted. The design of the graphic representation in a trademark application is crucial, especially when it comes to non-traditional trademarks, such as three-dimensional trademarks. The graphical representation must be exact, thus enabling a third party to interpret the scope of protec-tion. If the plaintiffs in the UK case had been more exact in the graphical representation with regard to the size and colour of the tile, the outcome of the case may have been different.

Finally, the UK case also illustrates that it is always a good idea to investigate the possibility to challenge the registrability of the plaintiff’s trademark, even though the trademark enjoys a high reputation.

1 E.g. CJEU Case C-273-00, 12 December 20022 Case No: HC12B01387, 16 November 2012

Reported by Ann-Charlotte Järvinen,

Attorney at Law, Stockholm office

The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.

The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.

Documents

REPORTS ON RECENT DEVELOPMENTS IN INTELLECTUAL …decisions; i.a. C-202/05 (“Yissum”) where the European Court of Justice (ECJ) ordered that a product according to the Regulation