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It ruled that there will be trademark infringement when the use of a design causes market confusion through similarity. It also said that the general considerations for determining whether there is market confusion in identification include the similarities between the designs, the intentions of the respondent/ defendant, and the historical background and practices concerning use of the design.

Edwin Co v Office for Harmonization in the Internal Market (OHIM) and Elio Fiorucci

Italian fashion designer Elio Fiorucci contested Japanese company Edwin Co’s 1997 Community trademark registration (CTM) of his name, despite selling all of his creative assets to the company in 1990. Fiorucci argued that, under Article 8(3) of the Italian Industrial Property Code, Edwin needed consent to register his name as a CTM.

Te Supreme Court of India refused to hear Bayer’s appeal against the Division Bench of the Delhi High Court’s decision in February 2010. Its decision reaffirmed the lower court’s view that that ‘patent linkage’ is an issue of government policy and not for courts to decide.

Ashwin Julka, managing partner at Remfry & Sagar, says: “Innovator pharma companies will now have to wait till amendments in this regard are introduced by the legislature or a fresh enactment along the lines of the [US] Hatch Waxman Act is brought into force.”

Therasense, Inc v Becton, Dickinson & Co

Abbot Diabetes Care’s (formerly Therasense) patent for a blood glucose test strip that is used to help manage diabetes was found to be unenforceable due to inequitable conduct, because information about a related European patent was withheld from the US Patent and Trademark Office (USPTO) during prosecution.

Te US Court of Appeals for the Federal Circuit, sitting en banc, reversed this decision in May because inequitable conduct against a single claim was an ‘atomic bomb’ that could render an entire patent unenforceable.

Paul Sutton, a founding partner of Sutton Magidoff LLP, says: “Te Federal Circuit, en banc, tightened the materiality element required to establish inequitable conduct, such that it will be far more difficult to prove the defense of patent unenforceability.”

DHL Express France SAS v Chronopost SAS

Chronopost brought trademark infringement proceedings against DHL in France. It argued that DHL’s online mail management service used text that infringed its ‘webshipping’ CTM. Chronopost wanted to prevent DHL from using text that infringed its CTM throughout the EU, and although it was granted an injunction to that affect in a French national court, the issue of where the injunction was enforceable could not be resolved.

On April 12 the CJEU ruled that an injunction that is issued to prevent further trademark infringement is enforceable throughout the EU. It added that when a ruling applies only to part of the EU, the national court should specify the limits of the decision.

Traub says: “[Tis] puts CTM owners in a much stronger position compared to national registration owners. However...the enforcement of court decisions of one Member State in other Member States will remain difficult until further progress is made in cross-border enforcement.”

Lacoste v Crocodile International

Te longstanding battle between French fashion giant Lacoste and Singapore-based fashion company Crocodile International over the use of Lacoste’s protected crocodile emblem was decided by the China Supreme People’s Court in December 2010.

Te court provided important legal guidance for lower courts when dealing with foreign company versus foreign company cases.

28 World Intellectual Property Review November/December 2011

On appeal from the General Court, the Court of Justice for the EU (CJEU), in its July 5 ruling, reaffirmed the lower court’s decision that Article 52(2) of the CTM regulation prevented the CTM registration of Elio Fiorucci. Tis is because an earlier right to the name existed under national law and the article’s non-exhaustive list of examples was not limited to personality, as Edwin had argued, but it included the commercial use of the name.

Florian Traub, a senior associate at Squire Sanders Hammonds, says: “Te [court] has found the right balance in interpreting the relationship between national law and the CTM Regulation.”

Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, et al

Stanford University claimed priority rights, which it had been assigned by an employee, to patents for a procedure that tests the effectiveness of AIDS treatments. It argued that Roche Molecular Systems, a molecular diagnostics company that owned a similar agreement that the employee had also signed, infringed those patents with a HIV testing kit that it had sold worldwide.

On June 6 the US Supreme Court said that the Bayh-Dole Act, which concerns patent rights in inventions made with federal assistance, did not allow Stanford’s rights to supersede those of Roche.

Paul Sutton, a founding partner of Sutton

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