IP Report 12 - Q4 2019
Inteo is a Belgian law firm focused on intellectual property and related practice areas. This newsletter reports on noteworthy developments and court decisions relevant to intellectual property and technology law in Belgium and the EU.
Patents – stay of proceedings pending EPO opposition – prior use: In a judgment issued on 3 October 2019, the Ghent enterprise court held that three subsidiaries of the Renson group infringed two Belgian patents BE1020617 and BE1020618 for a window screen mounting system and lateral guides. The court awarded damages to the patentee, as well as an injunction and a product recall and destruction.
The case was initiated in 2014, prior to the centralization of jurisdiction over patent matters at the Brussels enterprise courts. In an interim judgment dated 21 September 2017, the court had stayed proceedings. Renson had opposed the parallel European patents at the EPO. Because the defendants’ invalidity arguments were all but identical to those ran in the opposition and a decision by the EPO Opposition Division would be issued shortly, the court issued a stay. The patents were maintained in the opposition proceedings. Renson appealed and it asked for another stay pending the appeal before the Technical Board of Appeal. The court denied that request. It explained that a decision at the appellate level of the EPO is far from imminent. Further delay would effectively neutralise the patentee’s exclusive rights.
In a judgment that is lengthy by Belgian standards, the court dismissed Renson’s invalidity attacks based on lack of novelty, added subject matter and obviousness. It further found that Renson’s screens are within the scope of protection of several claims of the patents. In subsidiary order, Renson invoked a right of prior use. It asserted that it had, before the priority date of the patents, the knowhow required to apply the invention. The court dismissed that defence. While the underlying facts cannot be determined with certainty based on the judgment, the court’s motivation was remarkably strict for the defendants. It first explained that Renson did not clearly identify the party or person within the group that allegedly qualifies for the defence. Requiring a group of companies to specifically identify which subsidiary or individual is the prior user (and, by implication, restricting the defence to that subsidiary) may disproportionately affect groups with a separate research division. It is perhaps more appropriate to apply the EU single economic entity doctrine to this question. Secondly, the court stated that it was not enough that the defendant showed that it was at a stage where it could design a product having all features of the invention. The court explained that a successful prior use defence almost by definition requires an internal prototype that is ready for production. While the burden of proof of prior use must rest firmly on the defendant, requiring a production-ready prototype appears to unnecessarily raise the bar. A more coherent approach could be to apply the same standard to the prior user’s evidence as the one that applies to patent applications under Article 83 of the European Patent Convention.
Trade marks – descriptiveness: On 31 October 2019, the President of the Brussels enterprise court dismissed Omega Pharma’s trade mark infringement action against Ceres Pharma. It revoked two trade marks in the proceedings for descriptiveness. Omega Pharma markets dietetic products under the trade mark “XL-S Medical”. The logo mark used by Omega Pharma includes an arrow between the XL and the S component. Omega Pharma filed infringement proceedings against Ceres Pharma’s use of the mark “X-Slim”.
Ceres Pharma challenged the validity of the marks invoked by Omega Pharma. The court revoked a Benelux and an EU trade mark for an “XL>S” logo because it was descriptive for the goal consumers want to achieve with the products. XL and S are standard clothing sizes. The public would perceive the combination “XL>S” as an indication of weight loss. Omega Pharma further failed to establish acquired distinctiveness.
In dismissing infringement of the other marks invoked by Omega Pharma, the Court considered that there only very limited similarity between the signs at issue. It also found that the degree of attention of the relevant public of the medical devices marketed by the parties is higher than average because the products have a health impact. The decision may be subject to an appeal.
Designs – scope of protection mirrors validity: In a judgment issued on 30 August 2019, the Brussels court of appeal reversed a finding of infringement of registered Community designs (“RCDs”) for remote controls. The judgment is a reminder that filing designs for minor variations of an earlier design can come back to bite the registrant. FM Marketing and Ruwido supplied Telenet, a Belgian cable operator, with remote controls for set-top-boxes, with a first delivery taking place in August 2012. After the relationship went sour in 2014, Telenet started sourcing remote controls from Universal Electronics (“UE”). Ruwido complained that the remote control supplied to Telenet by UE infringed its RCDs.
In the first instance, Ruwido obtained an injunction against Telenet based on its RCDs. The court of appeal reversed that decision. It explained that the requirement of individual character in Article 6 of Regulation (EC) No 6/20002 mirrors the criterion to determine the scope of protection of an RCD in Article 10(1). Telenet and UE (cleverly) did not contest the validity of Model 3. In result, the court of appeal was bound to accept that this RCD was valid in the proceedings. Telenet and UE then argued that, if Model 3 had individual character over the earlier registrations for Model 1 and 2, their remote control could not be within the scope of protection of either of those RCDs. The court of appeal agreed that the appearance of the Telenet remote control – inter alia in terms of button configuration – is further removed from Model 3 than the minor differences between Model 3 versus Model 1 and 2. In result, the court of appeal found that marketing the UE product is not an infringement of the RCDs for Model 1, 2 and 3. Ruwido also invoked its later RCDs for Model 4 and 5. The court of appeal revoked these titles for lack of novelty. FM Marketing had supplied the Ruwido products covered by these registrations to Telenet more than 12 months prior to the filing of the RCDs.
Pharmaceutical advertising : Article 9 of the Belgian Medicines Act of 25 March 1964 provides that advertising for prescription pharmaceutical products that is directed to the general public is prohibited. Apotex sought an injunction against Eurogenerics (“EG”) based on inter alia this provision. Its action was denied in a judgment issued by the President of the Brussels enterprise court (Dutch language division) on 17 October 2019. On the occasion of its rebranding, EG launched a campaign with videos featuring the catchphrase “What does almost every Belgian have at home without knowing it? Affordable pharmaceuticals by EG”. The campaign did not relate to a specific EG product, but it did announce the new get-up of EG products in general.
Apotex argued that the campaign fell foul of EU and national rules for advertising pharmaceutical products. The court dismissed the action. Relying inter alia on §209 of the Advocate-General’s opinion in case C-322/01 Docmorris, the court stated that the prohibition of advertising medicinal products does not extend to institutional or corporate advertising. It only covers product advertising. The court noted that EG’s campaign was not product advertising because it related to EG as a company and its business. It did not specifically mention EG products, their active ingredients or their therapeutic indication. Instead, the court held that EG specifically took care not to show any of its products in an identifiable way.
Copyright – originality and independent creation: In a judgment issued on 17 October 2019, the Belgian Cour de Cassation ruled on the requirement of originality in copyright. In Oosterlynck v Meubar, the Brussels court of appeal had held that a furniture collection did not meet the requirement of originality because of its similarity to an earlier third party collection. The Cour de Cassation vacated that decision on a point-of-law appeal.
The Cour de Cassation explained that a defendant relying on earlier works to contest the originality (and copyright protection) of a later work, must establish that the author of the later work knew or could have reasonably known the earlier work. This judgment appears to introduce the notion of independent creation in copyright protection. It is somewhat surprising that the Cour de Cassation did not ask the Court of Justice of the European Union for a preliminary ruling on this issue. It is settled law that originality is a concept that is subject to uniform application of European Union law.
Short other news: EU Advocate-General Tanchev sent shockwaves through the trade mark community with his opinion in case C-371/18 Sky. The AG opines that registering a trade mark for a broad category of goods and services without any intention to use it in connection with the specified good or services may constitute an element of bad faith.
In T-601/17, the General Court confirmed the cancellation of the EU trade mark consisting of the shape of the Rubik’s Cube because the essential characteristics of that shape are necessary to obtain the technical result of the rotating capability of the product.
In T-844/18, the Board of Appeal of the European Patent Office sent its preliminary remarks to the Broad Institute and the opponents. The case relates to an important CRISPR patent and the assignment of priority rights in the case of joint applicants. The Board does not exclude the possibility of a referral to the Enlarged Board of Appeal. In lighter news, the Board later informed the parties to the proceedings that it has received third-party observations from “what appears to be a noted Australian soap-opera character”. The hearing in the matter is scheduled for 13-17 January 2020.
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