SnIPpets: October 2012 | Fieldfisher
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SnIPpets: October 2012

Nick Rose


Germany, United Kingdom

SnIPpets: October 2012

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

Welcome to the Autumn 2012 issue of snIPpets, the intellectual property newsletter from Fieldfisher covering intellectual property news from the last few months.

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

Brand Enforcement

How brand owners can help to protect against Fakes. 

Trade Marks

Purple rain on Nestlé parade: the High Court rejects an appeal by Nestlé against its unsuccessful attempt to prevent Cadbury obtaining a trade mark registration for the colour purple.

Translating IP TRANSLATOR: the Court of Justice seeks to provide clarity on the specification of goods and services and the use of class headings in a trade mark application. 

Lindt's non-traditional chocolate bunny trade mark; devoid of distinctive character: The Court of Justice confirms that the shape of a chocolate rabbit is devoid of distinctive character and has failed to acquire sufficient distinctiveness to make it capable of registration.

No 3D mark for chocolate mouse: the Court of Justice confirms that there can be no registration for a 3D mark consisting of a block with a chocolate mouse on the top. 

U.S. POLO ASSN. confusingly similar to POLO-POLO: the Court of Justice considers the application of the Medion case when comparing elements in composite marks.

Red Bull's intention to use BULLIT sufficient to deny defence to trade mark infringement: the High Court confirms that Red Bull did not act in bad faith in applying to register the BULLIT marks.


EU allows resale of downloaded software: the Court of Justice rules that, in principle, the owner of copyright in software cannot stop someone who has purchased and downloaded that software online from reselling it.


Battle of the Tablets: Court of Appeal confirms that Samsung's Galaxy tablets do not infringe Apple's registered Community design and that Apple needs to publish statement to that effect.

Alloy Wheels are not "Spare Parts" and infringe BMW's design rights: the High Court rules that replica alloy wheels infringe BMW's Community registered designs and there is no "spare parts" defence. 

Database Rights

Database rights can be infringed by servers outside the jurisdiction: The Court of Justice confirms that you can't avoid sui generis database rights by locating a server outside of the jurisdiction.


Entitlement to Damages – in the balance: Defendants establish a defence to a damages claim that otherwise would have followed from the finding that the patent was valid and infringed. 

The role of post-dated evidence in UK patent litigation: Mr Justice Arnold provides clarification and guidance on whether the inventiveness or sufficiency of a patent can be affected by evidence which is not available at the date of the patent but only comes into existence at a later date.

Virgin Atlantic Airways v Contour Aerospace and others:  Which country did you say?: The High Court decides that it is not entitled to review administrative decisions of the EPO declining to give declaratory relief.

Amending a granted patent to avoid invalidity: The Patents County Court reviews whether amendments made to a granted patent make the patent invalid for added matter.

CJEU rules on cross-border interim relief in patent proceedings: The Court of Justice of the European Union ("CJEU") has found that the rules regarding exclusive jurisdiction under the EU Jurisdiction Regulation do not prohibit courts of a member state granting cross-border interim injunctions in patent proceedings.

Patents County Court suitable for Goliath v Goliath dispute: the Patents County Court uses case management and common-sense to decide a patent case between two well-funded multinationals in an expeditious and cost-effective manner.

Other News

Other snippets, including latest on the Orphan Works Directive, the Unitary Patent, the small claims track in the Patents County Court and proposed changes to design legislation.

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