Category Archives: Intellectual property

Popping the champagne bubbles!

The IP Enterprise Court has decided that certain sales of clothing branded with the registered trade mark “VEUVE CLICQUOT” were not covered by the scope of consents from the trade mark owners to the use of the marks.

The sales by the defendants therefore amounted to trade mark infringement and passing off. There were a number of defendants and the court said they were all liable.

The court awarded the trade mark owners £125,000 in damages and granted an injunction to prevent further infringement and passing off.

This case demonstrates the importance of ensuring that your licences to use intellectual property are wide enough for the needs of your business, and the necessity to stay within the remits of those licences.

If you need any advice on such issues, please email Karen.Mason@Novalex.co.uk

Imprisonment for online copyright infringement

Offences of online copyright infringement are currently punishable by a maximum of two years’ imprisonment, whereas the maximum custodial sentence for infringement in respect of physical goods is ten years.

In July 2015 the government opened a consultation asking whether the maximum custodial sentence available for online and offline copyright infringement of equal seriousness should be brought into line at ten years?

The government has just published the responses to the consultation. It received 1,032 responses, with an overwhelming 1,011 opposing the proposal and only 21 supporting. The government states that it is now carefully considering the best way forward.

Patents and plant breeders’ rights

The European Parliament (EP) has expressed its concern that recent decisions involving tomatoes and broccoli could lead to more patents being granted in respect of natural traits introduced into new varieties of plants by means of essentially biological processes such as crossing and selection and calls on the European Commission, among other things, to:

  • ensure legal clarity regarding the prohibition of the patentability of products obtained from essentially biological processes and clarify that breeding with biological material falling under the scope of a patent is permitted;
  • ensure that the EU will safeguard guaranteed access to, and use of, material obtained from essentially biological processes for plant breeding, in order, where applicable, not to interfere with practices guaranteeing breeders’ exemption; and
  • pursue the exclusion from patentability of essentially biological processes.

Use it or lose it!

The EU General Court has dismissed an appeal against the revocation of a trade mark registered in respect of various building materials, on the ground that the proprietor had not, in the five years since registration, demonstrated genuine use of the trade mark in the EU in relation to the goods for which it had been registered.

The invoices incorporating the trade mark produced as evidence of use were of relatively low value when compared to the proprietor’s overall volume of sales of the goods concerned. It followed from case law that the smaller the commercial volume of the exploitation of a mark, the greater the need for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use.

However, the additional evidence produced by the proprietor in no way adequately compensated for the low sales volume represented by the invoices bearing the mark. In particular, the mark did not appear on the extracts from the proprietor’s website and the catalogues produced did not allow the conclusion to be drawn that the goods appearing in them had been marketed under the contested mark during the relevant period

Amendments to Registered Designs Act 1949

The government intends to amend UK designs legislation to provide registered design owners with the option of giving constructive notice of registered design rights by marking products with a website address at which the details of the registration would be published.

The government confirmed that it had no plans to extend the concept of constructive notice to unregistered design rights.