The Board of Appeal of the European Patent Office has decided that, when a request is made for the EPO to hear a witness on the details of alleged public prior use, the EPO must grant this request before deciding that the alleged public prior use is neither established nor novelty destroying. The invention related to a turbine pump having a stator stage in which the blades overlap so as to make the stage optically opaque in the axial direction. In opposition proceedings the opponent challenged the European patent on the ground, among others, of a novelty-destroying public prior use. In evidence, various documents were submitted, in which an optically opaque property was mentioned. The patent proprietor submitted that the documents did not result in an overlap that made the stator discs optically opaque. The opponent offered a witness to testify that the manufactured stator discs were in fact optically opaque. The Board of Appeal decided that the EPO should have granted the request for witness evidence when this relates to exactly when and how and what was made available to the public. In summary, when a witness has been offered to provide evidence of the “when”, “how” and/or “where” relating to an alleged public prior use, then the EPO should grant this request. Not to do so may be a substantial procedural violation. ....Click here for full details >>

In the above case, the patent proprietor’s representative requested postponement due to a previously booked Christmas family holiday in Switzerland. On appeal, the Board referred to the provisions of Article 15(2) of the Rules for Procedure of Boards of Appeal. The booked holidays were a necessary, but not sufficient, reason for delaying a Hearing, because procedural economy also had to be taken into consideration. The representative’s pre-booked holiday, in Switzerland, was for one month, and an interruption of a holiday of this duration in Europe for two days was not considered unreasonable. In addition, the Board noted that, while the representatives had said that no other suitable colleague was available, the replacement representatives had in fact taken an active part in the earlier prosecution, contrary to the original representative’s assertion. ....Click here for full details >>

The German Federal Supreme Court has now confirmed in a further decision that the exclusion of methods in the German utility model act has to be interpreted narrowly and concerns only mere working or production methods. In the present case, the Federal Patent Court had refused a claim directed to a telecommunication arrangement for the transmission of data, comprising means for establishing a connection between an end terminal and a server, means for transmitting data from the server to the end terminal, means for repeatedly checking the presence of a control signal, means for switching in case a control signal is present, means for switching back in case a corresponding further control signal is present. The Federal Patent Court argued that such a claim would essentially relate to a process of transmitting data between an end terminal and a server, and would define a timely sequence of steps for transmitting the data. Thus, the wording of the claim, although written as a product claim, would define a method, which is excluded from protection by a German utility model. The Federal Supreme Court did not follow this opinion and confirmed that this was the intention of the legislator to only exclude mere methods from utility model protection, because they could not be presented in a concrete way and thus, would not be suitable for an un-examined protection right. ....Click here for full details >>

This judgment resulted from a reference made by the Austrian Supreme Patent and Trade Mark Senate in a case between Verein Radetzky-Orden and the Bundesvereinigung Kameradschaft “Feldmarschall Radetzky”. In this case, the Court interpreted Article 12(1) of the Directive to mean that not-for-profit character of use does not constitute an obstacle to considering the use to be genuine. Trademarks registered by a non-profit making association, for example paid welfare services, may have a raison d'être, in that they protect the association against the possible use in business of identical or similar signs by third persons. As long as the association in question uses the marks of which it is the proprietor to identify and promote the goods or services for which they were registered, it is making an actual use of them which constitutes 'genuine use' within the meaning of Article 12(1) of the Directive. ....Click here for full details >>

One of Colgate-Palmolive's products include a toothbrush sold under the well known mark COLGATE EXTRA CLEAN whose design is registered under no. 185480 dated 9th May 2001 under the Designs Act, 2000. Rathod & Ors.(the defendants), also engaged in similar business activities had designed and were marketing a toothbrush bearing the trademark CELLO which according to Colgate infringed its registered design of COLGATE EXTRA CLEAN toothbrush. Colgate had initially sent a warning letter to Rathod and thereafter filed a design infringement suit against the defendants before the Delhi High Court. As a primary defence to Colgate’s claims, the defendants stated that they are the registered proprietors of the design of their product bearing the trademark CELLO and their design registration (dated 22nd May 2001) was prior to the COLGATE EXTRA CLEAN design registration. Confronted with defendant’s prior design registration, Colgate responded by immediately filing a request for amendment of its petition to include four additional design registrations of the variants of COLGATE EXTRA CLEAN toothbrushes, all of which were prior to Rathod’s design registration. The Court observed that the defendants contended proprietorship of a prior design registration and as a result, Colgate failed to make out a case in its favour as per the provisions of the Designs Act, 2000. The Court also stated that if Colgate’s amendment request were allowed, then as per the existing legal provisions, Colgate would have to plead separately and specifically for infringement of each of its design registrations and consequently separate causes of actions would lie for each such infringement. The Court further held that if Colgate wished to allege violation of its additional design registrations, it would have to file a separate suit for that purpose. The Court finally opined that the amendment if allowed would change the entire cause of action for the suit and would cause serious prejudice to the defendants, Rathod & Ors. The Court did not find any merit in Colgate's amendment request and dismissed the same without costs. ....Click here for full details >>

The Cancellation Division invalidated an RCD for a squeezy cosmetics bottle with indented sides and a flip-top cap on the basis of a Spanish registered design, finding that they created the same overall impression on the informed user. On appeal, the Board overturned the decision, finding that the informed user was the cosmetics industry, who would be aware of small differences between cosmetic bottles and containers used by their competitors. ....Click here for full details >>

In these cases, it appears that the applicant wished to claim a cardboard strip for retaining multiple bottles; one of the drawings showed the strip, whereas another showed it with bottles marked with a trade mark. The proprietor of the earlier trade mark applied to invalidate. The design was cancelled by the invalidity division at first instance. The Appeal Board upheld the OHIM decision. The design included the earlier trade mark and did not disclaim it. Further, the present design could be applied to all products and packaging, and was "obviously intended to be used in the course of trade". Accordingly the design was revoked. ....Click here for full details >>

The contested design related to a loudspeaker telephone unit for conference calls. The applicant for invalidation argued that it was similar to the "Concentus" unit made by Philips and registered as an international design. At first instance, OHIM upheld the design arguing that the informed user knew certain parts of the design to be constrained by functionality, and so would concentrate on their precise form, seeing differences in them. The Appeal Board disagreed with the first instance on the degree of freedom; the designer had a wide degree of freedom in this case, and therefore the similarities were significant. The design was accordingly revoked. ....Click here for full details >>

Mecalde 2 S.A. applied to invalidate an RCD for a closet door runner, alleging that it lacked novelty because it was identical to a runner that Mecalde had advertised and sold prior to the RCD filing date of 18 March 2005. Mecalde relied on a catalogue from 2002 and invoices from 2004 to prove the disclosure. The RCD was cancelled, and the Appeal Board upheld the cancellation, affirming that the combination of a catalogue with images of the earlier design and invoices referring to the catalogue number were sufficient to prove the disclosure. The Board corrected OHIM's erroneous statement that disclosure of a prior design in the 12 months preceding the filing of the RCD could be discounted as within the grace period, since the relevant period for determining novelty was the filing or priority date of the RCD. The Board dismissed the appeal. ....Click here for full details >>

German law against misappropriation (on the grounds of unfair competition law), is an effective tool against copying, especially in support of “classic” design and copyright law. Germany's Federal Supreme Court has clarified that such protection against misappropriation does not apply, by way of an exception, if the outer appearance of the accused product results from an independent work of creation by a designer who was not aware of the original. It has for the first time decided that “copying” in terms of Section 4 No. 9 Act against Unfair Competition requires that the designer of the attacked design must have been aware of the original when producing the copy. If the designer, bearing the related burden of proof, can demonstrate that he did not know the original when creating his own design, the owner of the original cannot claim rights for cease and desist, information, damages etc.; provided by the German law against misappropriation. Further, only the designer and not any other third party may be entitled to rely on that defence as a consequence whereof the designer of the contested design must distribute the product himself and cannot employ the organisation and skills of others for the marketing. ....Click here for full details >>