IP Report 8 - Q4 2018
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.
Trade secrets – food recipes – disclosure by former employee – On 10 October 2018, the Cour de Cassation issued a judgment in a rare trade secrets case under Article 309 of the Belgian Criminal Code. That provision sanctions the bad faith disclosure of trade secrets by an employee or former employee. Food Impact initiated a criminal action against a former employee. It alleged that that employee had misappropriated recipes and techniques for the preparation of Asian food.
In a judgment of 29 March 2018, the Brussels court of appeal dismissed the action because the existence of a protected trade secret had not been established. In its point-of-law appeal against that decision, Food Impact asserted a violation of Article 309 of the Criminal Code. It claimed that the court could not deduce the absence of a protected trade secret only from a lack of safeguards by Food Impact to keep the information secret. The Cour de Cassation dismisses that plea because the decision was also based on other reasons. Interestingly, one of those reasons was that “food recipes as such are not a protected trade secret”. The Cour de Cassation rules that the reasons referred to in the contested judgment were enough to decide that there was no protected trade secret. If this means that the court agrees that recipes cannot be a trade secret, that position is difficult to reconcile with Article 2(1) of Directive (EU) 2016/943. That provision extends protection as a trade secret to any information that (1) is secret, (2) has commercial value because it is secret and (3) was subjected to reasonable steps to keep it secret. Although the contested decision was issued prior to the the entry into force of the Belgian Act of 30 July 2018 implementing Directive (EU) 2016/943, similar language can be found in Article 39(2) of the TRIPS Agreement. It would have been more in line with these provisions to dismiss Food Impact’s point-of-law appeal because a lack of reasonable confidentiality safeguards is enough to disqualify as a trade secret.
Copyright – subject matter – taste – A little over a month later, another food manufacturer was denied protection. On 13 November 2018, the Court of Justice of the European Union issued its judgment in the highly publicised case C-310/17 on a referral for a preliminary ruling by the Arnhem-Leeuwarden court of appeal in the Netherlands. Levola is the manufacturer of ‘Heksenkaas’ or ‘Heks’nkaas’, a spreadable dip containing cream cheese and fresh herbs. Levola argued that the taste of its product was protected by copyright. It claimed that those rights were infringed by ‘Witte Wievenkaas’, the product of a competitor. The Dutch court asked the Court of Justice whether copyright could vest in the taste of a spreadable cheese.
In its judgment, the Court held that for there to be a ‘work’ within the meaning of Directive 2001/29, the claimed subject matter “must be expressed in a manner which makes it identifiable with sufficient precision and objectivity”, even though that expression is not necessarily in permanent form. The taste of a food product cannot, according to the judgment, be pinned down with precision and objectivity because its identification depends on individual taste sensations and experiences. The Court adds that the current state of scientific development does not provide a technical means to precisely and objectively identify the taste of a food product to distinguish it from other products. On that basis, it is decided that the taste of a food product is not a work protected by copyright. With these reasons, the Court seemingly draws an analogy with some of the Sieckmann criteria for the representation of a trade mark in the register (C-273/00 - for a detailed analysis see our publication on the subject). Interestingly, the decision appears to at least partially hinge on the current lack of technical means to identify a taste. This is a matter of evidence, rather the substance of copyright law. It does not close the door for revisiting this issue in the future, if and when such technical means were to become available. Perhaps such future case will relate to perfumes, to which the Levola judgment appears to apply by analogy.
Patents – preliminary injunction proceedings – requirement of urgency - On 20 March 2018, the Brussels court of appeal issued a judgment in relation to the statutory requirement of urgency in preliminary injunction proceedings. This requirement entails inter alia that the action must seek measures to mitigate or prevent serious harm. The claimant is required to act diligently diligently and without delay to prevent such harm. Sequenom is a US company that develops genetic testing, including non-invasive prenatal testing (“NIP-testing”). On the basis of a European patent, it sought an injunction against the ‘Harmony’ NIP test marketed in Belgium by Roche Diagnostics Belgium under a licence of Hoffmann-La Roche AG.
The court of appeal dismisses the action because the requirement of urgency to obtain a preliminary injunction in Article 584 of the Belgian Judicial Code has not been met. The court observes that Sequenom never commenced proceedings against other market players in Belgium offering NIP testing. Sequenom admitted that it held the view that those tests would also be covered by its patent. Because Sequenom tolerated these tests on the Belgian market since 2013, the Court finds that it has “allowed erosion of its exclusive patent rights” for several years prior to the proceedings against Roche Diagnostics. In result, Sequenom could not credibly claim that interim relief was necessary to prevent serious harm.
Patents – doctrine of equivalence – numerical values – In a judgment issued on 20 September 2018, the President of the Brussels enterprise court dismissed an infringement action by Bombardier based on the doctrine of equivalents. Bombarbier is the proprietor of a European patent N° EP 1 171 336 B1 for a low-platform rail vehicle. A public tender for the procurement of tramway vehicles was awarded to Bombardier’s Spanish competitor Construcciones y Auxilar de Ferrocarriles (CAF). Bombardier argued that the trams in CAF’s offer infringe the patent under the doctrine of equivalents.
The patent claims a rail vehicle, one of the features of which is a wheel diameter between 470 and 560mm. The specification explains that 470 corresponds to the diameter of a wheel that has been subject to wear and tear. It was not in dispute that the wheels of CAF’s vehicles have a diameter of 580 to 640mm, again taking wear and tear into account. Bombardier argued infringement by equivalence because the wheel diameter must be adjusted by the skilled person on the basis of the load on the wheel axis. The court finds that there is no technical teaching in the patent to support that argument. Nor did Bombardier succeed in establishing that the skilled person would necessarily adjust the wheel diameter to the load on the axis. As an obiter dictum, the court adds that numerical values in a patent claim, especially those that were added during EPO prosecution, must be interpreted strictly. The infringement action is dismissed.
Trade marks – stay of infringement proceedings – EUIPO invalidity action - Article 132 EUTMR provides that an EU trade mark court must stay infringement proceedings if an application for a declaration of invalidity has been filed with the EUIPO, unless there are special grounds for continuing the hearing. In a judgment issued on 25 July 2018, the President of the Brussels enterprise court decides to stay an action for an injunction against Warner Bros’ launch of “Rampage”, a movie headlining actor Dwayne Johnson and an albino gorilla named George.
Rampage United is a Belgian organiser of dubstep and drum & bass events. It is the exclusive licensee of EU trade mark N° 014282412 "Rampage". The trade mark was registered inter alia for relaxation in Nice Class 41. Rampage United sent a demand letter to stop the release of the movie in the European Union, prompting an EUIPO invalidity action by Warner Bros.
When Rampage United filed infringement proceedings before the President of the Brussels enterprise court, Warner Bros requested a stay of proceedings. Rampage pressed on, arguing that there were special grounds to proceed. One of those was that the movie promotion would effectively destroy all goodwill that Rampage had developed in relation to its trade mark. The court explains that the concept of ‘special grounds’ within the meaning of Article 132 EUTMR must be interpreted strictly. It includes inter alia the situation where it is apparent that the invalidity action is manifestly unfounded. The court finds that one of the grounds relied on by Warner Bros, an alleged prior use of the sign for video games and for another Warner Bros movie that has been commercially available since 1963, is not prima facie manifestly unfounded. The court also considers that Rampage has not taken immediate action upon being notified of Warner Bros’ own trade mark application for ‘Rampage’ by an EUIPO surveillance letter. For these reasons, the infringement action is stayed pending the outcome of the EUIPO invalidity proceedings.
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