Top ten IP litigation developments of 2012/13

© Shepherd and Wedderburn LLP

Top ten IP litigation

developments of

2012/13

In House Lawyers Group 28 May 2013

John MacKenzie, Shepherd and Wedderburn LLP

Asda loses its specs appeal

2 Top ten IP litigation developments of 2012/13

CTM No. 5608385

Specsavers Asda

CTM No. 1321298

“Specsavers”

Specsavers v Asda [2012] EWCA Civ 24

The Pirate Bay


• Dramatico Entertainment Ltd v. BSkyB and

others [2012] EWHC 268 (Ch)

• 97A of the Copyright Designs and

Patents Act 1988

• “[w]hile in theory it would be possible to

identify [the users of the site]…, that would

be a costly exercise in itself. It would be

wholly disproportionate to attempt to join or

serve all such users, and there would be no

basis for singling out particular users for

joinder or service. Nor, I suspect, would

most users wish to defend the proceedings

or even make representations.”

Ambush marketing and the Olympic games


London Games and

Paralympics Act 2006

• London Olympic

Association Right

““It’s a pity they didn’t put the same energy into the ticketing and

security arrangements for the Games that they put into protecting

their sponsorship revenue streams.” – Paddy Power

Privacy law and the royal family


"very different from saying that

it is information which interests

the public – the most vapid

tittle-tattle about the activities

of footballers' wives and

girlfriends interests large

sections of the public but no-

one could claim any real public

interest in our being told all

about it.“

Jameel v Wall Street Journal

[2006] UKHL 44

Public interest is…

Distinctiveness of a trademark

6 Assessing the distinctiveness of a trademark 9 January 2013

Trademark Act 1994

“S(1) Trade marks..

(1)In this Act a “trade mark” means any sign capable of being represented

graphically which is capable of distinguishing goods or services of one

undertaking from those of other undertakings….

s3 Absolute grounds for refusal of registration

(1)The following shall not be registered—

(b)trade marks which are devoid of any distinctive character,

…Provided that, a trade mark shall not be refused registration by virtue of

paragraph (b) …above if, before the date of application for registration, it has in

fact acquired a distinctive character as a result of the use made of it.”

What is distinctive character?


• Average consumer

• “reasonably well informed and reasonably observant and

circumspect”

• Judged by reference to:

• Products or services

• Relevant public

• Attention span

• Who is the relevant average consumer?

3D Shapes


C-144/06 P Henkel KGaA v OHIM

C-136/02 Mag Instrument v OHIM

T-460/05 Bang & Olufsen A/S v OHIM

C-344/10 P and C-345/10 P Freixenet, SA v OHIM

R 1096/2006-4 Weldebrau GmbH & Co v Kofola Holding

Slogans


• Audi AG v. OHIM [2010] ETMR 18

• T 175/08 Paroc Oy AB v. OHIM

“insulate for life”

• T 524/09 Meredith Corp v. OHIM

Acquired distinctiveness


Windsurfing Chiemsee Produktions v Boots • the market share;

• how intensive, geographically extent and time of use;

• Investment in promotion

• the proportion of the public who identify goods as originating from the owner of the mark;

• Evidence?

• Statements • chambers of commerce

• Industry

• other trade and professional associations.

• Survey evidence

• T-237/10 Louis Vuitton Malletier v. OHIM

• T-7/10 10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ AE v. OHIM

Libertel

11 Assessing the distinctiveness of a trademark 26 November 2012

Libertel Groep BV

v.

Benelux-Merkenbureau

Colour “Orange”

‘[T]he fact that the number of colours actually available is limited means that

a small number of trade mark registrations for certain services or goods

could exhaust the entire range of colours available. Such a monopoly would

be incompatible with a system of undistorted competition, in particular

because it could have the effect of creating an unjustified competitive

advantage for a single trader’

12 Assessing the distinctiveness of a trademark 26 November 2012

Societe des Produits Nestle S.A

v.

Cadbury UK Ltd

Colour: Pantone 2685C

What can be registered?


• Criteria should be the same for all types of mark

• Smells

• 3D marks

• Slogans

• Colours

• Perception of the average consumer

• Importance of acquired distinctiveness

Social media


Absusive/defamatory Tweets

• Tom Daley

• Cairns v Modi [2012] EWHC 756 (QB)

• Lord McAlpine

Social media in the workplace

• Eagle v Edcomm Pennsylvania DC No.

11-4303

Samsung v Apple


"Infringement of a registered

design does not involve any

question of whether there

was copying: the issue is

simply whether the accused

design is too close to the

registered design according

to the tests laid down in the

law. So this case is all

about, and only about,

Apple's registered design

and the Samsung products."

Samsung v Apple [2012] EWHC 889 (Ch)

Copyright and the internet

The Public Relations Consultants Association v Newspaper Licensing

Agency and others [2013] UKSC 18, 17 April 2013

• The operation of the internet

• The Information Society Directive

• EU Case law

• Premier League (FAPL v QC Leisure)

• Murphy v Media Protection

• Infopaq II

• Findings:

• Temporary/transient

• Purpose of exemption plain

• Technical and lawful purpose

• Copying had no independent economic significance

• Reference to EU

16 27 April 2012 Top ten IP litigation developments of 2012/13

Interflora v Marks & Spencer

i) The origin function of a trade mark is adversely affected by keyword advertising triggered by

the trade mark if the advertisement does not enable reasonably well-informed and

reasonably observant internet users, or enables them only with difficulty, to ascertain

whether the advertised goods or services originate from the trade mark proprietor (or an

economically-connected undertaking) or from a third party.

ii) The onus lies upon the advertiser to ensure that the advertisement does enable such users to

ascertain this without difficulty and hence that there is no real risk of such users being

confused.

iii) It is not sufficient to establish an adverse effect that some internet users may have difficulty in

grasping that the advertised goods or services are independent of the trade mark proprietor.

Confusion on the part of ill-informed or unobservant internet users must be discounted.

iv) If the advertisement causes a significant section of the relevant class of persons wrongly to

believe that the advertised goods or services are connected to the trade mark proprietor, that

does establish an adverse effect. Thus there is no single meaning rule.

v) In the context of the present case, it is relevant to consider whether the reasonably well-

informed and reasonably observant internet user is aware that M & S's flower delivery

service is not part of the Interflora network and, if not, whether M & S's advertisements

enable such a user to ascertain this.


The starting point for assessing Interflora's claims in the present case is

that, as is common ground, keyword advertising is not inherently or

inevitably objectionable from a trade mark perspective. On the contrary,

the case law of the CJEU in this field recognises that, as a general rule,

keyword advertising promotes competition: see in particular Google France

at [69] and Interflora (CJEU) at [58]. The question is whether, on the

specific facts of the present case, Interflora have established that M & S

has infringed the Trade Marks.

Next, as is again common ground, I must consider M & S's advertisements

in context from the perspective of the reasonably well-informed and

reasonably observant internet user, initially as at 6 May 2008. As

discussed above, it follows that I must discount the possibility of confusion

on the part of ill-informed or unobservant internet users. As counsel for

Interflora submitted, it also follows that I must be careful not to consider

the issues in this case from my own perspective, namely that of an

experienced and technically literate internet user who knows precisely how

Google AdWords operates and is aware of the issues. The average

reasonably well-informed and reasonably observant internet user is not

particularly technically literate, does not know precisely how AdWords

operates and is not aware of the issues.


More specifically, counsel for Interflora submitted that the evidence

showed that many internet users in the UK do not appreciate the

distinction between the natural search results and the paid

advertisements on Google's SERPs. In my view, this is something that is

likely to have changed over time. As the Ofcom reports show, as a

general proposition, internet literacy has steadily increased over the last

five years. Counsel for M & S submitted, and I agree, that many internet

users learn by doing. In general, I consider that internet users are more

likely to be aware both that there is a distinction and the broad nature of

the distinction now than they were in May 2008. Considering all the

evidence, however, I conclude that, even now, a significant proportion of

internet users in the UK do not appreciate that, unlike the natural search

results, the advertisements appear on the SERP because the advertisers

have paid for the advertisements to be triggered by a keyword consisting

of or related to the search term entered by the user.


Onus and burden of proof

Lord Mansfield's dictum in Blatch v Archer (1774) 1 Cowp 63 at 65 which was cited by

Lord Bingham of Cornhill in Fairchild v Glenhaven Financial Services Ltd [2002]

UKHL 22, [2003] 1 AC 32 at [13]:

"It is certainly a maxim that all evidence is to be weighed according to the proof which

it was in the power of one side to have produced, and in the power of the other to

have contradicted."

“Interflora made two attempts to adduce direct evidence as to consumer reaction to M

& S's keyword advertising. First, Interflora attempted to adduce witness statements

from witnesses selected from the respondents to two pilot surveys. The Court of

Appeal rejected this on the ground that the evidence was of no real value: Interflora

(CA I). Secondly, Interflora attempted to adduce witness statements from 13

witnesses identified from IBU's own customer records and from a questionnaire as

having seen M & S's advertisements after having searched for "interflora". Again, the

Court of Appeal rejected this on the ground that the evidence was of no real value:

Interflora (CA II). “ [para 292]


Onus and burden

M & S made no attempt to adduce any direct evidence of consumer reaction to its

keyword advertising. As counsel for Interflora pointed out, this is despite the fact that

M & S was well placed to do so. M & S has records of all the customers who have

purchased flowers from its website. As discussed above, M & S regularly conducts

consumer surveys seeking better to understand its customers' behaviour. As Mr

Bond agreed, it would have been possible for M & S to ask a statistically

representative sample of customers who purchased flowers from its website whether

they had done so after searching Google for "interflora" (or one of the variant terms),

and if so, why. So far as the evidence goes, M & S did not do so. Thus M & S had

made no attempt to prove that customers who search for, say, "interflora.co.uk" (and

thus are clearly looking for the Interflora website), but click through from of one M &

S's advertisements and end up ordering flowers from M & S, do so because they

have been persuaded by the advertisement to order flowers from what they

appreciate is a competitive service. M & S's failure to adduce such evidence does not

mean that it should be inferred that the evidence would have assisted Interflora; but it

does mean that M & S cannot rely upon such evidence to rebut the conclusions

which Interflora say should be drawn from the evidence which is before the court.

[para 293]


EU Patent Court


Draft Agreement on a Unified

Patent Court

• Role of the CJEU?

• Timetable for

implementation?

• Politics…

Keep watching this space!

Top ten IP litigation developments of 2012/13

Patents County Court



Procedure:

Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC

16, 19 November 2010

Statements of Claim

Statement on pre-action conduct

Statements of truth

Restriction on evidence

Overall cost benefit test

HHJ Colin Birss QC?



Limit on value of claims - £500,000

Cost Capping Regime

Dame Vivienne Westwood OBE v Anthony Edward Knight [2011] EWPCC

11, 11 May 2011

“Before they embark on litigation to enforce their intellectual property

rights (or defend themselves) the potential users of the Patents

County Court system need to be able to make a prediction in advance

as to their likely costs exposure. Their legal advisers need to be able

to say with confidence that the costs capping provisions can be relied

on.“



Stage of a claim Maximum amount of costs

1 Particulars of claim £6,125

2 Defence and counterclaim £6,125

3 Reply and defence to counterclaim £6,125

4 Reply to defence to counterclaim £3,000

5 Attendance at a case management conference £2,500

6 Making or responding to an application £2,500

7 Providing or inspecting disclosure or product/process description £5,000

8 Performing or inspecting experiments £2,500

9 Preparing witness statements £5,000

10 Preparing experts' report £7,500

11 Preparing for and attending trial and judgment £15,000

12 Preparing for determination on the papers £5,000



Ref. Sum

incurred

Summary

assessment

Limit in Table

A

Sum due

Costs incurred in High Court £33,069 £25,000 - £25,000

Defence (considering defences) 2 £11,325 £8,000 £6,125 £6,125

CMC 5 £8,783 £6,500 £2,500 £2,500

Application to amend Particulars of Claim

(Red Planet Westwood)

6 £2,837 £2,000 £2,500 £2,000

Preparing witness statements 9 £26,009 £20,000 £5,000 £5,000

Application to amend Particulars of Claim (Too

fast to live)

6 £3,411 £2,500 £2,500 £2,500

Defendant's pre trial applications 6 £2,983 £2,500 £2,500 £2,500

Trial and judgment 11 £25,116 £20,000 £15,000 £15,000

Totals £113,533 £86,500 £36,125 £60,625



Key features:

“Very” active case management

Common sense and commercial reality

Expertise in IP litigation

The “small claims” of IP Litigation

2013/14

What to look out for?

29 27 April 2012 Defamation Online

Three to watch

ASDA v Specsavers

Generics v proprietary v national interests

Novartis and Glivec

ST KILDA and marks with a geographic element

30 8 February 2012 Property Seminar - Arbitration (Scotland) Act 2010

Questions?


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Top ten IP litigation developments of 2012/13