IP Report 10 - Q2 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.

Designs - ice cream cones - distinctive sign in a registered design: With a heat wave hitting Europe this week, what better way to start than with a design for an ice cream cone. An invalidity applicant argued that a registered Community design included a sign that is confusingly similar to its Bulgarian figurative OZMO CORNET trade mark. It sought the invalidity of the RCD on the basis of Article 25.1(e) of Regulation N° 6/2002. According to that provision, a design can be declared invalid “if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use.”

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In T-794/16, the General Court recalls that Article 25.1(e) does not only cover cases where the design incorporates a sign that is identical to the distinctive sign of a third party. Trade mark proprietors are also entitled to rely on that provision if there is a likelihood of confusion between the trade mark and the sign incorporated in the design. The General Court holds that the Board of Appeal was not entitled to find that there was no likelihood of confusion in this case. One of the factors considered by the General Court was that the word ‘cornet’ does not form part of the Bulgarian language so the Board of Appeal could not disregard this element in its comparison of the signs. After the annulment of the contested decision by the General Court, the Board of Appeal issued a decision declaring the ice cream cone design invalid.

Supplementary protection certificates – protected by a basic patent – On 26 February 2019, the Brussels enterprise court revoked Gilead Sciences’ supplementary protection certificate for a combination of tenofovir disoproxil and emtricitabine. Gilead markets an antiretroviral drug with those active ingredients for the treatment of HIV under the brand name Truvada®. The basic patent for the SPC is European patent EP 0 915 894. Specifically, Gilead relied on claim 27 of that patent, which claims tenofovir disoproxil with a pharmaceutically acceptable carrier and « optionally other therapeutic agents ».

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As in other EU jurisdictions, the validity of the SPC was challenged. Sandoz submitted that the combination product is not protected by the basic patent within the meaning of Article 3(a) of Regulation N° 469/2009. In C-121/17, the CJEU put forward a two-pronged test to determine whether an SPC meets that requirement if it claims a combination of active ingredients that are not expressly mentioned in the basic patent. Firstly, each of the active ingredients of the combination must be specifically identifiable in light of all the information disclosed in the patent. Secondly, the combination must necessarily, in light of the description and the drawings, fall under the invention covered by the patent.

In the Belgian first instance proceedings, Gilead’s SPC failed on both accounts. The Brussels enterprise court decides that claim 27 did not allow the skilled person to specifically identify emtricitabine. Nor would a combination of tenofovir disoproxil and emtricitabine necessarily fall under the invention disclosed in the patent. The court suggests that « optionally other therapeutic ingredients » is included to indicate that other active ingredients could be used with tenofovir disoproxil. However, because no specific technical effect was disclosed for a combination, the court finds that the skilled person would not consider a combination, let alone the specific combination with emtricitabine, to be the solution to the technical problem solved by the invention. We were informed that Gilead has appealed the judgment.

Copyright – parody defence – trade marks – use not for the purpose of distinguishing goods: Greenpeace found itself in court after a marketing stunt. The NGO had been in discussions with Studio 100, a producer of popular children’s television series. It criticised Studio 100 for use of its franchises to promote processed luncheon meat. Greenpeace launched an advertisement featuring Maya the Bee, a popular character in an animation series produced by Studio 100. The spot shows Maya smoking and seemingly invites viewers to purchase “Maya Light” cigarettes. To add insult to injury, it includes a clip with a mother offering her child a Maya cigarette that is lit. It ends with the statement that these cigarettes are not a real product, but that there are other Maya products that may cause harm to children’s health. The spot drew significant attention in Belgian media. Studio 100 demanded a withdrawal and a public apology. Greenpeace denied that request.

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Studio 100 and the estate of the author initiated injunction proceedings based on an EU trade mark and copyright. Greenpeace held that its commercial is a parody and, as such, protected free speech. Judgment was issued on 4 April 2019. For the copyright action, the court applied C-201/13 to find that the commercial has all the essential characteristics of a parody. However, Greenpeace failed to strike the required fair balance between its freedom of expression and the protection of Studio 100’s reputation. One factor considered by the court was that the commercial was widely spread and seen by children who may not be able to read and understand the closing statement. The court imposed an injunction because of the disproportionate effect on Studio100’s reputation. Additionally, it found that the Greenpeace commercial infringes the author’s moral rights in Maya the Bee.

However, the trade mark action was rejected. Studio 100 submitted that the use of its Maya trade mark in the commercial was use “other than use for the purposes of distinguishing goods or services” within the meaning of Article 10(6) of Directive 2015/2436. The holders of Benelux trade marks are entitled to oppose such use by virtue of Article 2.20.2.d of the Benelux Intellectual Property Convention, if the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark without due cause. However, no equivalent protection is provided for the holders of EU trade marks.

Designs – automotive – informed user – individual character – On 6 June 2019, the General Court issued a series of judgments in design cases in the automotive sector. Two German toy car manufacturers challenged the validity of registered Community designs for cars held by Porsche and Volkswagen. The cases had in common that the prior disclosures relied on to attack the RCD were earlier models of the same product line. That element was relevant for the discussion on the informed user within the meaning of Article 6 of Regulation N° 6/2002.

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In T-209/18, Porsche requested the General Court to annul EUIPO’s decision to revoke its designs for the 991 series of the Porsche 911 model for lack of individual character over the 997 series. In T-210/18, the RCD for the 997 series had in turn been successfully attacked based on the even earlier 996 series. Porsche criticized the Board of Appeal’s definition of the informed user in these decisions. That user was aware, according to the Board, that car manufacturers update existing models rather than developing new cars altogether. Porsche argued that the relevant user has an even higher degree of attention and that he or she is particularly attentive to differences between the various models of the Porsche 911. The General Court rejects that plea. It confirms that, even in the case of a car that has been available for decades, the informed user will be the user of the category of products for which the design is registered (i.e. automobiles) not the user of the specific product covered by the registration (a Porsche 911 model). Because Porsche’s other pleas in law were also dismissed, its applications for annulment were rejected.

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Things went the other way for the invalidity applicant in cases T-43/18, T-191/18 and T-192/18. Rietze, a German miniature car manufacturer, attacked Volkswagen’s RCDs covering models of the VW Bus, VW Caddy Maxi and VW Caddy based on earlier models in the same series. Its invalidity actions were rejected by EUIPO’s Board of Appeal. Before the General Court, Rietze argued that the informed user would pay less attention to the differences between successive models of a car from the same manufacturer than to those between the models of cars of different manufacturers. The General Court rejects that plea because Rietze provided no factual or legal basis for that statement.

Patents – GUI – inventive step: Apple iPhones have since long moved on from the slide-to-unlock feature. Some generations of the device unlocked by means of a fingerprint reader. The current line-up is equipped with FaceID facial recognition to unlock devices. On 28 May 2019, the Technical Board of Appeal of the European Patent Office confirmed the rejection of Apple’s European patent application N° EP 2 299 381 for “Unlocking a device by performing gestures on an unlock image”. The decision is a helpful reminder of how the EPO deals with graphical user interface elements.

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The patent application essentially claims a gesture-based procedure for unlocking the touch screen of a device and to provide visual feedback for supporting the user in the process. In the Figure above, the user drags the element 702 along the pre-defined path 704 to unlock the device. This is what is generally known as slide-to-unlock. The patent application claims that the optical intensity of the 708 buttons increases as the user drags the slider, allowing the user to accept or decline the call once the unlock procedure is complete. The slide to unlock feature as such was known from the NeoNode 1 device. However, the TBoA found that the feature that a user interface element appears at the beginning of the unlock sequence and increases in optical intensity during the process was not disclosed in the prior art.

To meet the requirement of inventive step, Apple had to convince the Board that these GUI elements “together with the content presented credibly assist the user in performing a technical task by means of a continued and/or guided human-machine interaction process”. Providing reassuring feedback (a confirmation that the user has been doing the right thing so far) is not in itself a technical effect. Apple argued that the feature could save users time because once the optical intensity stopped changing, he or she would realise that gesture input had failed and immediately start over. The Board accepted in principle that saving users time in this manner could be a technical effect. In this case, it was not persuaded by Apple’s argument for three reasons. Firstly, the description of the patent did not discuss or allude to this effect. Secondly, the increase in optical intensity was not necessarily continuous or smooth in all claims. If it is not, the user would not necessarily know that input had failed. Finally, the claims of the application did not define how the user would recognise that the unlock sequence was complete by means of the increase in optical intensity. If it stops to change, the user could also interpret this to mean that the unlock sequence had been completed. Apple failed to convince the Board that the distinguishing GUI features help users solve a technical problem. The Board concludes that these features merely animate the slide to unlock input known from the prior art in an aesthetically or otherwise pleasing manner. The patent application is rejected for lack of inventive step.

Trade marks – Benelux cancellation actions – first decisions : In May and June 2019, the Cancellation Division of the Benelux Intellectual Property Office rendered its very first decisions. The administrative procedure for cancellation or revocation has only been available since 1 June 2018. On 14 May 2019, the Office denied Heineken’s action to cancel AB Inbev’s semi-figurative ‘PURE DRAUGHT’ trade mark for beer and means to store and dispense beer.

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Heineken argued that the mark consists exclusively of elements that are descriptive for the goods. It requested the cancellation of the mark because it is descriptive and lacks distinctiveness. The application was rejected. On descriptiveness, the Office held that although the slogan ‘Better technology for a fresher beer’ is descriptive, the sign as a whole is not. Heineken did not sufficiently substantiate that the combination ‘PURE DRAUGHT’ consists exclusively of signs which may serve to designate the characteristics of the relevant goods. The Office also refers to the visual elements of the trade mark. It considers that the letter ‘U’ is a striking element stylized in such a way that it renders the sign distinctive.

The cancellation applicant fared better in the second decision, which was issued on 3 June 2019. The trade mark ‘IK WIL VAN MIJN AUTO AF’ (Dutch for “I want to get rid of my car”) was found descriptive for recommerce services for automobiles. The trade mark proprietor operates an online platform for the sales of second hand cars. It submitted that its trade mark had acquired distinctiveness through intensive use. The Office finds that the market research provided by the proprietor indicated that the trade mark was known, at best, to 48% of the respondents. In the circumstances of the case, this percentage was not considered enough to accept acquired distinctiveness. With this decision, the Office diverges from the preliminary assessment made by the district court in Overijssel. That court had imposed a preliminary injunction on the cancellation applicant on 9 August 2018. In that decision, the court decided that the trade mark proprietor had made a prima facie case of acquired distinctiveness.