IP Bulletin - October Edition

KEY CASES AND DEVELOPMENTS

Lego Juris A/S v OHIM and MEGA Brands Inc, ECJ- registrability of Lego brick. The ECJ has dismissed Lego's appeal against the EU General Court's decision that its trade mark, consisting of the three-dimensional shape of a Lego brick, was invalid under Article 7(1)(e)(ii) of the CTM Regulation. (See the November 2008 and Jan 2010 Bulletins for the reports on the CFI judgment and Advocate General's Opinion respectively). Oracle America, Inc (formerly Sun Microsystems, Inc) v M-Tech Data Ltd and another, Court of Appeal – judgment in parallel imports case set aside. This case was an appeal from Kitchin J's judgment in which he had granted summary judgment to the claimant, Sun Microsystems, Inc – now Oracle America, Inc. The Court of Appeal has set aside the High Court's decision. PATENTS

IPO – software patents

Dell Products LP BL O/321/10, 16 September 2010

A hearing officer of the IPO has held that the IPO must follow the decision of the Court of Appeal in Symbian in determining the patentability of computer-implemented inventions, rather than the EPO practice.

In Symbian, it was held that the Court of Appeal may depart from its previous decisions, if it was satisfied that the EPO Enlarged Board of Appeals had formed a settled view on an issue which differed from that arrived at in a previous decision. However, it was not bound to do so.

The Hearing Officer said that if she could be certain that the Court of Appeal would follow the EPO's approach, it might be difficult for her to continue to follow the precedent set in Symbian. However, the Court of Appeal clearly did not consider the law at the EPO to be settled at the time of Symbian.

The Hearing Officer added that it was worth noting that the questions referred by the President which were deemed inadmissible by the Enlarged Board (see May 2010 Bulletin) were not the same as those on which the Court of Appeal sought clarity. Further, even if the Court did now consider the law to be settled, it is not certain that it would adopt the EPO approach, as it is not bound to depart from its earlier precedent.

TRADE MARKS

ECJ - registrability of Lego brick

Lego Juris A/S v OHIM and MEGA Brands Inc, Case C-48/09 P, 14 September 2010

The ECJ has dismissed Lego's appeal against the EU General Court's decision that its trade mark, consisting of the three-dimensional shape of a Lego brick, was invalid under Article 7(1)(e)(ii) of the CTM Regulation. (See the November 2008 and Jan 2010 Bulletins for the reports on the CFI judgment and Advocate General's Opinion respectively).

Article 7(1)(e)(ii) of the CTM Regulation provides that it is not possible to register as a CTM a mark which consists exclusively of the shape of goods which is necessary to obtain a technical result.

Lego Juris A/S was the owner of the CTM below, consisting of the three-dimensional shape of a red Lego brick. Mega Brands applied to have the mark declared invalid.

The ECJ held that the General Court's interpretation was consistent with Philips. The presence of one or more minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics were dictated by the technical solution to which that sign gave effect, did not alter the conclusion that the sign consisted exclusively of the shape of goods which was necessary to obtain a technical result.

The expression "essential characteristics" referred to the most important elements of the sign. Once the essential characteristics of the sign had been identified, it was only necessary to assess whether those characteristics performed the technical function of the product concerned. The technical functionality could be assessed by taking into account previous patents describing the functional elements of the shape concerned, as was the case here.

The restriction on the prohibition in Article 7(1)(e)(ii) to the shape of goods which was "necessary" to obtain a technical result did not mean that the shape at issue must be the only one capable of obtaining that result.

The ECJ rejected Lego's argument that the General Court had been wrong not to have taken into account surveys on the public's perception of the shape of the goods. It said that the situation was different from Article 3(1)(b) of the Trade Marks Directive and Article 7(1)(b) of the CTM Regulation, where the perception of the relevant public must be taken into account to determine whether the sign enabled the goods or services to be recognised as originating from a particular...