SnIPpets: January 2013 | Fieldfisher
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SnIPpets: January 2013

Nick Rose


United Kingdom

SnIPpets: January 2013

snip•pet (snip'it) - noun - a small piece or portion, specifically of information

Welcome to the January 2013 issue of snIPpets, the intellectual property newsletter from Fieldfisher covering intellectual property news from the last few months. We hope that you will find it an interesting and enjoyable read. If you have any questions or comments on the topics discussed, or IP matters in general, please get in touch.

In this edition of snIPpets the topics discussed are as follows:

Trade Marks

Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases

The Court of Appeal has provided important guidance that will restrict the use of surveys and evidence from witnesses who responded to surveys in trade mark infringement cases. This should simplify the way that cases need to be prepared, significantly reducing the costs of trade mark enforcement.

Warning for owners of trade marks with a "figurative figleaf of distinctiveness"

The High Court rules that a descriptive CTM, which was only registered because it included figurative elements, cannot prevent the use of a sign that doesn't include those elements.

Advocate General advises that registering a CTM should not be a defence to infringement

The AG advises that registering a sign as a Community Trade Mark cannot be a defence to infringement of an earlier mark.

3-D Scrabble Tile: not a sign capable of graphic representation

The High Court invalidates a trade mark registration for the scrabble tile for not being a sign and not being capable of graphic representation.

Use of a different form of trade mark can still be genuine use

The CJEU confirms that use of a trade mark in a form that is different to the mark as registered can be sufficient for proving genuine use, where the differing elements do not alter the distinctive character of the mark.

Yoghurt is Yoghurt

The Irish Patents Office revokes the ACTIVIA trade mark for virtually all goods covered by its registration on the basis of non-use.

China trade Mark Practice Note – Retail Services

Chinese Trade Mark Office now allowing trade marks to be registered in relation to “retail and wholesale services for pharmaceutical, veterinary and hygienic preparations and goods for pharmaceutical purposes” in class 35.


Extra-Time at the High Court

The Court of Appeal has dismissed an appeal in the FA Premier League v QC Leisure case confirming that the defence of "free public showing or playing of broadcast" applies to the highlights and match replays contained within Premier League broadcasts.

Database Rights

English Court takes jurisdiction over another database infringement case

The High Court will decide whether remotely extracting information from a database located in the UK and using it elsewhere is an infringement of database rights in the UK.


The Informed User can have an imperfect recollection

The CJEU confirms that, when comparing the overall impression of a Community design with an earlier trade mark, the informed user may sometimes have an imperfect recollection.


You don't own my email!

The High Court confirms that there is no property in the content of an email.


English Court flexes its muscles on declarations of non-infringement

The High Court confirms that it has jurisdiction to grant declarations of non-infringement in relation to foreign patent designations.

Proposal to make clinical trials less risky and online drug sales safer

UK Government and EU Commission have been asking the pharma industry to comment on their proposals to make UK clinical trials for innovative drugs less risky and the purchase of online pharmaceuticals safer.

Court of Appeal confirms invalidity of patent for EXELON because it was obvious to resolve racemate using standard techniques

COA upholds High Court's ruling that Novartis AG's patent covering a (-)-enantiomer was invalid for obviousness. 

Patents / Competition

Astra Zeneca loses appeal at ECJ

The CJEU has dismissed AstraZeneca appeal against the ruling in which it was fined AZ €52.5 million for abusing its dominant position in violation of EU laws.


The MBE Course: Fieldfisher Meets Budding Entrepreneurs

Beatriz San Martin provides a personal insight into Fieldfisher's involvement in the Cambridge University Masters in Bioscience Enterprise course

What to watch out for in 2013

Key IP developments coming up in 2013

Other News

Other SnIPpets, including the forging ahead of the Unitary Patent, proposed costs management in IP litigation, changes to UK copyright legislation and EU dialogue on copyright in the digital age.

Download SnIPpets PDF >

For further information, please contact Mark Holah, Partner, Nick Rose, Partner or Beverley Potts, Senior Associate (PSL) at Field Fisher Waterhouse LLP

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