Vorsprung through legal technique: ‘Eisenfuhr/Schennen’ commentary on the Community Trade Mark Regulation

Interflora: a pyrrhic victory as both parties return to the drawing board

The Court of Appeal has allowed Marks & Spencer’s appeal in the latest round of the Interflora litigation and, unusually, has remitted the case to the High Court for retrial.

German Federal Supreme Court, 18 September 2014 – I ZR 228/12 Gelbe Worterbucher [Yellow Dictionaries]

Blocking injunctions protect trade mark rights on the internet

In a groundbreaking decision, the England and Wales High Court (High Court) extended the practice of issuing blocking injunctions, a practice that had gained popularity in the copyright context, to protect trade mark rights on the internet.

Legal implications and patentability of human stem cells: Australia and Japan compared

This article reviews how the criteria for patentability apply to inventions involving human embryonic stem cells in both Australia and Japan, provides an analysis of the current position of the law, and discusses the possible implications in relation to the patenting of human stem cells.

It also examines a recent court case, Cancer Voices Australia and another v Myriad Genetics Inc and another, the first judicial decision in Australia to consider the patentability of isolated DNA or Ribonucleic Acid (RNA) sequences that challenged the statutory provisions within the Patents Act 1990 (Cth).

This article concludes that Japan is comparatively moderate in granting stem cell patents and has a far less ambiguous approach to stem cell patents than Australia.

Third party’s abusive BENFICA trade mark rejected for notoriety and bad faith

The Turkish Patent Institute has rejected a third party’s abusive BENFICA trade mark application on grounds of it being a well known mark and because the application was filed in bad faith.

The power of national courts and the Unified Patent Court to grant injunctions: a comparative study

Continental Europe and the United Kingdom give diverging answers to the question of whether the granting of a cease and desist order (‘permanent injunction’) in favour of the proprietor of a European patent (EP) may in a specific case be refused due to considerations of proportionality.

The authors discuss the differences between Continental Europe and the United Kingdom and argue that the future Unified Patent Court (UPC), under the Agreement on a Unified Patent Court (UPCA) and the 17th version of the Rules of Procedure (RoP), can make use of a pan-European ‘lowest common denominator’ when deciding whether proportionality should play a role in deciding on an injunction claim.

A German-language version of this article will appear in JIPLP’s sister publication, GRUR Int.

How to prove if a shoe is protected by copyright–and who owns it?

This case concerns mainly the issue of whether it is sufficient to hold oneself out as being the author in order to be entitled to copyright protection when the authorship is not disputed or, on the contrary, if there is a need, even without dispute, to prove a creation process.

UK claim construction: return of the Protocol questions and file wrapper estoppel

The law of patent construction in the UK has been largely settled since the 2004 House of Lords’ decision in Kirin-Amgen which, in confirming purposive construction as the correct approach, ruled out any US-style doctrine of equivalence. It also doubted the utility of the Protocol Questions, despite their regular application by the UK courts and the adoption of similar questions in other EU jurisdictions.

The law on file wrapper estoppel, the use of a patent’s prosecution history to estop the patentee from arguing a different construction during litigation, has been settled for even longer. The UK courts have felt strongly that it should not be necessary to read the prosecution history in order to determine a patent’s scope. Germany and Canada concur with the UK’s approach, however, the US courts take the opposite stance with file wrapper estoppel providing a counterbalance to its doctrine of equivalents.

Mr Justice Arnold’s judgment in Actavis v Eli Lilly has reopened both these issues. Arnold J not only applied the previously defunct Protocol Questions in construing Eli Lilly’s Alimta patent but then used the patent’s prosecution history in deciding that its claim did not extend to cover Actavis’s variant. This comes close to the US approach criticized by Lord Hoffmann in Kirin-Amgen and may lead to a resurrection of the Protocol Questions as a doctrine of equivalence, even if not explicitly recognized as such.

ZIMA found to be inherently registrable for tomatoes

An appeal from a decision of the Registrar of Trade Marks has found that ZIMA is not descriptive of a type of tomato, and so is entitled to registration.