is your intellectual property at risk?

Is your Intellectual Property at risk?

19 May 2016

Neil MohringPartner

Andrew TerryPartner

Adrian ToutoungiPartner

Eversheds LLP | 02/05/2023 |

Neil MohringIntellectual Property, Partner

Neil leads our intellectual property and media group. He specialises in brand protection and copyright issues with particular focus on the media sector.

[email protected]

Andrew TerryIntellectual Property, Partner

Andrew specialises in reputation management, brand protection, intellectual property issues, advertising and sponsorship. He regularly advises on all aspects of defamation, privacy, trade marks, passing off, copyright, media rights, anti-counterfeiting and social media issues.

[email protected]

Adrian ToutoungiIntellectual Property, Partner

[email protected]

Adrian has extensive experience of all aspects of intellectual property, in particular complex patent litigation in a number of industry sectors.


Today’s webinar

Impact of the EU Referendum on IP Protection− Neil Mohring, Partner

A blow to registered design protection?Copycat packaging - an opportunity missed?− Andrew Terry, Partner

Patent/SPC risk− Adrian Toutoungi, Partner


Impact of the EU Referendum on IP Protection

Neil Mohring, Partner


− Copyright

• Territorial rights

• Arises automatically – no registration required

• Existing directives implemented into UK law

• Directives will not be implemented and decisions of the ECJ will not be binding if UK leaves EU

• No short term impact

• Increased divergence going forward



− Trade Marks

• Significant impact on EU trade mark regime due to EU trade marks

• Loss of protection in UK

• Trade mark owners may have to apply for UK trade marks

• Increased vulnerability of revocation for non-use

• Effect on existing arrangements such as licences and security



− Patents

• Existing patents will not be affected as bundle of national patents

• Unitary Patent, one European patent across participating countries

• UPC due to be ratified this year

• Ratification and implementation of UPC may be delayed



− Models

• European Economic Area

• World Trade Organisation

• Switzerland


A blow to registered design protection? PMS International Ltd v Magmatic Ltd [2016] UKSC 12

Andrew Terry, Partner


Community Registered Design Background

Magmatic's registered design

− Magmatic registered a Community Registered Design (CRD) for the Trunki in February 2003.

− In 2013 Magmatic initiated proceedings against PMS, arguing that the Kiddee Case (their version of the ride on suitcase) infringed their CRD.

− A primary question when deciding whether a design infringes a CRD is does the design produce a different overall impression on the informed user when compared to the CRD.


Comparison of designs Background

The Kiddee case

The Trunki case

− When comparing the designs at first instance, Arnold J took into account the shape of the designs but held the graphics were irrelevant, relying on P&G v Reckitt Benckiser [2007] EWCA Civ 936.

− The court found that the Kiddee Case created the same overall impression, and the Trunki CRD was infringed.


Overall impression Appeal

The Court of Appeal held that the overall impression of the Trunki CRD and the Kiddee Case was not the same and held that the trial judge erred in three respects:

1. Arnold J failed to identify that the overall impression of the Trunki CRD was of a horned animal. This differed from the Kiddee Cases which gave the impression of animals with ears (or insects). Kitchin LJ also held that the absence of decoration can in itself be a feature of a registered design;

2. Surface decorations are relevant in context, if the overall impression is altered. In this case eliminating the surface decoration of the Kiddee Case from consideration was wrong, as it affected how the shape struck the eye; and

3. Arnold J failed to note that the CRD image was shown in two monochrome colours, i.e. grey for the body and black for the wheels, spokes, strap and strips at the front and rear. The differences in the use of colour represented a potentially significant difference.


Lord Neuberger agreed with the position taken by the Court of Appeal and made comments as to the proper approach to CRD applications:

1. Designers have complete control of what they register and how many applications they make;

2. Designers have the freedom to be as general and as specific as they require;

3. When assessing the scope of protection, the court will focus on the images included in registration;

4. Designers can submit any images they choose;

5. Where a design is shown in colours, those specific colours are taken to be part of the design application. However, a black and white drawing or photo is taken to cover all colours;

6. A CRD can claim an absence of decoration or ornamentation as part of its design; and

7. Line drawings are more likely to be interpreted as not excluding ornamentation than a computer-aided design image (CAD). If an applicant wishes to make the broadest claim possible, it may therefore be advisable to use a line drawing.

The proper approach to CRD applications Supreme Court ruling


− RDs offer powerful protection for 25 years.− UKIPO fees reduced for RDs in 2016.− UKIPO states 32% year on year increase in applications for RDs. − Applicants for RDs should consider taking a three stage approach:• Register a full colour photo of the design;• Register the same image devoid of any colour; and • Register a simple line drawing, devoid of any tonal contrasts.

− This approach should equip the rights holder with the widest range of options for challenging infringement by competing products.

Design rights still likely to increase in popularity Practical implications

Copycat packaging - an opportunity missed?Consumer protection review

Andrew Terry, Partner


− In 2012 the supermarket Aldi began selling a hair oil product call “Miracle Oil”. The product was in a similar bottle, and used similar colours, to the well established high end product, “Moroccan Oil”.

− Moroccanoil alleged this amounted to passing-off and issued proceedings.

− In order to argue a passing off claim, a claimant must show:1. there is goodwill in the name and

the get-up of the product; and2. there had been misrepresentation

as to the source of the product which caused damage to the goodwill.

Moroccanoil Israel Limited v Aldi Stores Limited [2014] EWHC 1686

Passing-off and copycat packaging


− Claimant could establish goodwill in the product.

− However, court concluded that the public were aware of Miracle Oil, but did not believe it came from the same manufacturer as Moroccanoil. They were not confused about it being the same product.

− Aldi succeeded in creating a product that brought Moroccanoil to mind, but that was not unlawful.

− At the time of the hearing there were invalidity proceedings before the EUIPO and therefore the case could not deal with the trade mark issues, only the passing-off claim.

No misrepresentation Decision


− In 2014 Aldi sold fish products in similar packaging to The Saucy Fish Co.

− The High Court granted an interim injunction against Aldi, which subsequently withdrew their product from the shelves and settled out of court.

Seachill v Aldi Stores Ltd 2014Copycat packaging and registered trade marks

Aldi product

The Saucy Fish Co product


− Claimant was successful because it was relying an earlier UK trade mark registration for packaging of its products.

− They were UKTM and not EUTM and therefore not vulnerable to the torpedo (filing a cancellation action at EUIPO against a EUTM in order to frustrate an attempt later to bring infringement proceedings in a member state).

− Saucy Fish were successful because it went to market with its brand foremost in its mind and having invested upfront in its trade mark portfolio.

Basis of decision

Registered trade mark


− In April 2015 the coalition government launched a consultation calling for evidence on amongst other issues, the nature of copycat products and costs associated with brand owners.

− Many commentators and brand owners thought this would lead to new legislation.

− The report, published in October 2015, found that “there is little clear evidence that the use of similar packaging is causing any significant consumer detriment or hindering competition or innovation. There would be risks of unintended consequences if we changed the status quo, given the uncertainty around the evidence and the effect of the change, particularly in respect of the litigation that would result and on enforcement. More generally it would be difficult to reconcile granting this enforcement power with the Government’s deregulatory objectives.”

Opportunity missed? Government consultation on copycat products

Patent riskCountdown to the Unitary Patent and Unified Patent Court

Adrian Toutoungi, Partner


− The existing system – patent disputes in Europe

− The upcoming reforms

− Timing

− Changes in risk profile for your IP and your European operations

− Action items for now

On the agenda


− European patent system• mix of national patents and classic European patents (“EP” or

“bundle” patents)• European Patent Office (Munich, Vienna, The Hague)• 38 contracting states (including all EU member states)• take effect post-grant as national patents

− High patent validation costs and renewal fees− Post-grant enforcement / revocation only in the relevant national

court• parallel proceedings • different procedural rules (discovery, evidence, bifurcation,

timetable, costs)• high costs and risk of inconsistent decisions

Existing system in the EU


− The most far-reaching reform of the patent landscape in the EU for 40 years

− Unitary patent• A single patent covering most EU member states• including DE, FR, NDL, IT and UK (“EU-25”)• not HR, ES or PL• nor other non-EU EPC states (CH, NO)• Will exist in parallel with national patents and bundle patents• ‘Top-4’ renewal fee model

− Unified Patent Court• Jurisdiction over the EU-25 in a single set of proceedings• market of 420 million consumers (1.6x US), $14bn GDP (1x US)

New systemA sweeping reform


― Exclusive jurisdiction• infringement and validity• unitary patents, bundle patents, supplementary protection

certificates― Opt-out for existing bundle patents/applications― 1st instance: local, regional and central divisions― 2nd instance: single Court of Appeal

The Unified Patent Court – the bare bonesNew system


Timing - Status of ratification

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―Watch out for the sunrise period from Q3 2016―Subject to Brexit

Timing

Q1 2017


― Central revocation of your business’ own patents (if not opted-out)― Changes in patent filing strategy by competitors• switch to unitary patents for better geographical coverage• increase designation of contracting states in classic European

Patents― Pan-EU-25 injunctions (final and interim)• major impact on your business continuity/freedom to operate

― Forum-shopping― Better evidence-gathering mechanisms available• saisie-contrefaçon

− Significant concern about increased patent troll activity

Your IP and your business operations in the EU Changes in risk profile


1. Carry out a review of your EP portfolio―decide which existing bundle patents/applications to opt-out―be ready to apply timely (sunrise period)

2. Identify third party EPs which your business wants to revoke―available in central division even after 9-month EPO opposition

period ―as long as no opt-out―be ready to apply on Day 1

Action items for now – avoiding traps and seizing opportunities


3. Review your key licence agreements and R&D collaboration agreements―consider amending―control over opting-out of UPC, filing of unitary patents―enforcement rights for licensees?

4. Review your internal template technology licence agreements, R&D collaboration agreements and asset sale agreements.

5. Consider filing protective letters at appropriate local/regional divisions of UPC



6. Consider changes to patent filing strategy―categories of invention for which unitary effect would be

desirable?―attitude of investors?―avoid unitary patents, but designate/validate EP in more states to

take advantage of UPC?7. Source updated version of portfolio management software

More information at: www.eversheds.com/unified-patent-court



Today’s presentation highlighted the importance of regularly reviewing your IP portfolio ― The EU referendum will affect IP protection, particularly in relation to EU

trade marks so review your portfolios to consider additional protection that you may need in the event of the UK leaving the EU.

― Consider your design registration policy and ensure that registrations afford sufficient protection following the Trunki case.

― Review your EU portfolio and consider the actions recommended by Adrian in anticipation of the introduction of the Unitary Patent.

Please feel free to contact us directly if you would like to follow up on any of the points discussed today.


Questions?

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