In the two cases G2/07- Broccoli/ PLANT BIOSCIENCE and G1/08-Tomatoes / STATE OF ISRAEL) referred by the European Patent Office (EPO) to the Enlarged Board of Appeal, the point to be clarified was: what constitutes an essentially biological process, with reference to Rule 26(5) of the EPC and Article 53 lit b of the EPC (European Patent Convention). Rule 26(5) states that a plant production process is ‘essentially’ biological if it consists entirely of natural phenomena such as ‘crossing’ or ‘selection’. Article 53 lit b, excludes from patentability certain essentially biological processes for the production of plants which has become precedent. The point at issue is that although ‘crossing’ and ‘selection’ is considered natural phenomena, such a process through human intervention acquires a different dimension, becomes technical, and conflicts with the terms of EPC provision. The EBA holds technical means towards plant breeding does not necessarily merit protection as a biological process, and does not escape exclusion. However, if a technical step (performed without repetition) introduces a fresh trait or characteristic in the genetic modification of a plant, the process leaves the realm of plant breeding and is excluded from patentability. ....Click here for full details >>

Article 3 of the CIPA (Chartered Institute of Patents Agents) Higher Courts Regulation allows patent attorney litigators (PALs) to conduct IP litigation, defined as any matter relating to the protection of IP. The ‘protection’ clause was disputed in proceedings concerning a worldwide technology transfer between two companies DSB and Atrium in the UK High Court. DSB sold Atrium patent applications, information and hardware on considerations of royalty payments on further sales. Atrium filed for declaratory relief and DSB counterclaimed for royalty dues. DSB contended that a patent attorney conducting Atrium’s case was not entitled to act under the CIPA regulations as Article 3 limited PALs to proceedings for protection of IP rights and the present case concerned breach of contract. Atrium sought declaration that the proceedings were within a PAL’s scope of authority. The judge accepted that the wording scope outlined in Article 3 was unclear and ruled in Atrium’s favour that royalty disputes did include ‘protection of IP rights’ and that under section 190 of the Legal Services Act, 2007, the scope of privileges for PALs was coterminous with Article 3. ....Click here for full details >>

Harry Wind opposed Sanyang Industry’s proposed mark ‘Wind’ for classes 11, 12 and 37 relating to all kinds of motorcycles and their parts. Class 37 covers motor vehicle repair work, while class 12 covers a range of products including all terrain vehicles, senior people carts, and motorcycles of various kinds. Harry Wind, whose mark was registered in June 1999, offers repairing services of all kinds for motor vehicles and successfully opposed Sanyang’s mark which he considered similar to his own, under Article 8(1)(b) of the community trademark regulations. The opposition was upheld for class 37, but the opposition to class 12 was rejected. OHIM’s Fourth Board of Appeal held there was no similarity as Sanyang’s proposed registration was for tangible goods, whereas Harry Wind’s mark covered services. The decision was upheld by the General Court on December 15, 2010, given that the relevant public was unlikely to confuse origin and equate garage services with a manufactured/ branded product. ....Click here for full details >>

Worldgem Brands Srl’s community trademark NIMEI LA PERLAMODERN CLASSIC was declared invalid by OHIM’s cancellation division as unfairly impinging on Nute Partecipazioni SpA’s (formerly Gruppo La Perla SpA) well known mark LA PERLA, following Nute’s complaint. The First Board of Appeal had reversed, and in a May 2007 decision, the General Court held similarities between the marks detrimental to LA PERLA under Article 8(5) of the CTM regulations and remanded to the Second Board of Appeal. The Second Board of Appeal dismissed the inval idat ion ac t ion on absolute grounds holding that Nute failed to demonstrate detriment to its mark. LA PERLA was registered for swimwear, sportswear, clothing, jewellery and watches. On Nute’s further appeal, EU’s General Court annulled the Board’s decision for failing to invalidate Worldgem’s mark for pearls. As for establishing detriment, it is of greater importance to show whether a mark has been taken advantage of. Nute had complained that Worldgem’s depiction of bikini, twin set and sweater with pearls branded under NIMEI LA PERLAMODERN CLASSIC would confuse consumers as to origin of the pearls. ....Click here for full details >>

The German Federal Patent Court citing section 8, para 2 of the German Trademark Law held that ‘MASTERPIECE’ as a proposed trademark, despite its somewhat stylised depiction, is un-registrable for furniture, water-beds, mattresses and dressers, as it lacked distinctiveness. Further, the attempt at stylisation was a simple graphic which is common, and fails to indicate origin of the product.‘MASTERPIECE’ as a trademark had been granted earlier, the applicant in this case had pointed out. However, the German federal laws do not make it binding upon authorities to sanction a future trademark based on previous instances of granted registrations for the same mark applied earlier (with variations). ....Click here for full details >>

It was observed by the Bombay High Court that the Plaintiffs (Medley) had been keen in protecting their marks and this was the reason why they had opposed the Defendants (Winsome) application for registration of the impugned marks. They had also been vigilant and had instituted suits to restrain the Defendants (Winsome) from their infringing activities. There was hardly any delay in filing the present suit from the date on which the new cause of action arose (i.e the registration of the marks). Thus, it was held that there had been no delay on the Plaintiffs (Medley) part in seeking relief. Moreover, since the Plaintiffs (Medley) had successfully established a prima facie case in their favour, they were held to be entitled to the grant of temporary injunction. ....Click here for full details >>

Country Inn Private Ltd. filed suit for infringement and passing off against Carlson Inc. In the suit, it was found that Country Inn had not been able to establish a prima facie case in their favour for the grant of an injunction against the Defendants (Carlson). Thus, their suit was dismissed. Carlson Inc. also filed a cross suit against Country Inn. When the suit came up for hearing, it was observed by the Delhi High Court that Country Inn had not been able to afford any reasonable explanation for the adoption of the identical “COUNTRY INN” mark. However, it was seen that they had been in the business of hotels and resorts under the said mark ever since the year 1993. The present suit for infringement had been instituted by Carlson after a lapse of more than 16 years. If the preliminary orders were to be passed against Country Inn, it would be obvious that they would suffer irreparable loss and injury. Therefore, Carlson’s application for preliminary injunction was also dismissed. ....Click here for full details >>

Germany’s Association of Bavarian Beer Brewers has since 1994, been trying to register Bavarian beer as a Geographical Indication along the lines of Parmesan Cheese or Champagne. The GI was issued in 2001. German beer producers took exception to Dutch brewer BAVARIA’s registration of BAVARIA as a trademark for its beers, feeling that the Dutch company’s beer would mislead consumers into thinking that the beer was from the Bavarian district. The court decision went in the Dutch company’s favour, as the BAVARIA trademark had been used by the company since 1925 and that it had applied to register the mark in 1995. The date to be considered, the court held, was the date of acknowledgement and not application, which for the Bavarian brewers was 2001 and therefore, the Dutch company had the earlier right to protection. ....Click here for full details >>

Fitness is big business. The principle of paying for the music played in gyms might be acceptable or not to some, but the Phonographic Performance Company of Australia Ltd (PPCA) which represents the rights of copyright owners, clearly believes in the pay policy. The PPCA, using a study, has locked horns with Fitness Australia (representing the fitness industry) on the issue. The Copyright Tribunal held that the PPCA under Australia’s Copyright Act 1968, is entitled to grant a licence under which a certain amount is to be charged for playing copyrighted music in a public place. Accordingly it fixed the rate for fitness centres at $15 an hour. The PPCA cited a ‘Gyms Survey’ as evidence indicating that exercisers were willing to pay. Fitness Australia questioned the procedural grounds underlying the Tribunal’s decision based on a survey it considered questionable. The Full Federal Court concluded that the use of the study in determining the rate as procedurally unfair and remanded. ....Click here for full details >>

Environmentalists can take heart from the Australian Federal Court’s December 2010 decision in the Goody Environment case, which held the company guilty of deceptive conduct, and contravening sections 52 and 53 of the Trade Practices Act. The Australian Standard (a voluntary standard) on a complaint by Australian Competition and Consumer Commission had found on examination, Goody’s plastic bags not to be biodegradable or compostable as claimed, but also containing unacceptably high levels of Molybdenum. The Australian Standard sets stringent norms for toxicity levels and prescribes a time frame within which a product must break down. The Federal court, based on the findings ordered Goody Environment to pay $65,000 to ACCC as costs; publish corrective notices on its website and undergo an educational program on Trade Practices. ....Click here for full details >>

From 2003 till date, the following foreign Geographical Indications have been registered in India - PERUVIAN PISCO (Alcoholic Beverages in Class 33) CHAMPAGNE (Alcoholic Beverages in Class 33) NAPA VALLEY (Alcoholic Beverages in Class 33) SCOTCH WHISKY (Alcoholic Beverages in Class 33) PROSCIUTTO DI PARMA (Meat in Class 29) ....Click here for full details >>

Singtel Optus sought to restrain Vodafone from broadcasting two television commercials for Vodafone’s ‘Infinite’ post paid plans for mobile phones considering them as misleading, deceptive and contravening section 52 of the Trade Practices Act. Optus held that Vodafone’s advertisements indicated that a user would be entitled to make infinite calls or send infinite text messages or have infinite access to social networking irrespective that the calls applied to standard calls within Australia or the networking to Facebook, Twitter, Foursquare, LinkedIn and My Space. The Federal Court on December 21, 2010 dismissing Optus’ allegations held the average user would correctly interpret the advertisements to mean the standard calls and networking services and no further qualification was needed. Regarding its print advertisements, Vodafone had undertaken to issue a bulletin to its stores specifying that the ‘Infinite’ plan was only for standard texts, calls and networking services. ....Click here for full details >>