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EUROPEAN IP UPDATE

NLO’s 125th anniversary

the future of protected innovation The revival of cross-border injunctions

Seizure by Customs: and then what? NLO SEPTEMBER 2012

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Table of contents

07

04

Colophon Editorial team Caroline Pallard, Marion Bruin, Harm van der Heijden, Kees van Balen,

Foreword

Loes Scheffer and Sabrina Thoen This issue Jaap Bremer (BarentsKrans), Paul

10 11 16

Clarkson, Hanneke van Hazendonk, Jeroen Kerkhof (Cijfers & Letters), Mari Korsten, Hiske Landheer, Yvonne Noorlander, Friso Onderdelinden,

03 Foreword Peter Simonis and Rolf Suurmond 04 NLO celebrates 125th anniversary Photography the future of protected innovation Jeroen Bouman, iStockphoto 07 Coming soon: the Unitary Patent Layout and the Unified Patent Court Goedinvorm grafische producties 10 The coronation of the Dutch Prince Print Willem Alexander and IP KapsenbergvanWaesberge bv 11 Community Trademarks: Is use in Articles from the European IP Update one member state sufficient? are also available at www.nlo.nl 12 The revival of cross-border injunctions 16 Seizure by Customs in the Netherlands 18 Healthcare applications in the cloud 20 Putting an end to trademark infringement in social media

To Nederlandsch Octrooibureau (NLO),

In this edition we also discuss the Unitary

2013 is a very special year. In 1888 our

Patent at length. Recently, developments

office came into existence in the city of

accelerated and in December 2012 the Euro-

Amsterdam, even before the Netherlands

pean member states reached an agreement.

had patent law. Today, 125 years later, we

Judging by the information we have now, the

may proudly look back at a rich history. At

system will become effective late 2014. This

the same time, we seize this opportunity

edition of the European IP Update has the

to focus on the future. More precisely,

latest state of affairs. Recent information on

the future of protected innovations. In

the Unitary Patent and our experts’ opinions

the Dutch media, discussions have been

are available at our website, following this link:

ongoing about the usefulness and necessity

www.nlo.nl/en/eu_patent.

of Intellectual Property. Some say it has a restraining impact on innovation.

Upon publication of this magazine, the INTA Annual Meeting 2013 will be taking place in

Obviously, we believe otherwise. Daily practice

Dallas (USA). Many of you attend this event. On

tells us Intellectual Property has a crucial role.

behalf of NLO, some of our attorneys will also

Š 2013 NLO

After all, none will invest time or money in tra-

be present. Meeting our colleagues is always a

All rights reserved

demarks, designs and ideas that can be copied

real pleasure. And whoever visits INTA will know

without difficulty. And yet, we do see certain

for sure: protected innovations are the future.

Postal address

trends and developments that interfere with

PO Box 29720

the future of Intellectual Property (see article

Herman de Haan

2502 LS The Hague

on page 4).

CEO

The Netherlands T: +31 70 331 2500 F: +31 70 352 7528

22 A right to repair or re-manufacture in disguise? 2

EUROPEAN IP UPDATE MAY 2013

www.nlo.nl

EUROPEAN IP UPDATE MAY 2013

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NLO and the future of protected innovations Author: Jeroen Kerkhof

This year NLO celebrates its 125th anniversary. Rather than taking this opportunity to reflect on our history, we much prefer to look ahead. We have therefore set out to investigate what the future may bring for our clients, and hence for ourselves, when it comes to protecting their innovations and intellectual property. Various technological, social and cultural developments confirm that this future could be very different from the past. This article touches on some of these developments, and also describes how we will go about in investigating the future of protected innovations.

In the early 1950s polio, perhaps besides a nuclear

communicated to the outside world: an effective

genes have a role in the development of e.g. breast

ovarian cancer surveillance and treatment. Myriad has

India vs. Big Pharma

tions. Recently, the Indian Supreme Court refused to

war, was the most fearsome threat to the American

vaccine had been developed to beat polio. Research

cancer. These patents, and the way in which Myriad

a monopoly on clinical testing of its genes in the U.S.,

Almost 60 years after Jonas Salk ridiculed the pa-

grant Novartis a patent for Gleevec, a most effective

people. Annual polio epidemics were taking more and

team leader Jonas Salk was interviewed on television.

has been using them, are controversial and for many

dictating the type and terms of BRCA genetic testing.

tenting of the polio vaccine (‘Could you patent the

drug against leukaemia. The decision creates room

more lives, mostly those of children. The 1952 epi-

“Who has the patent?”, he was asked. For a while, Salk

years they have been the subject of a legal battle.

Myriad has given women false negative results, while

sun?’), today the de U.S. Supreme Court will answer

for locally manufactured and much cheaper generic

demic was the heaviest of all claiming almost 60,000

was thrown off balance. “Well, the people I suppose.

The Association for Molecular Pathology, one of the

also barring other laboratories from testing genes

the question whether the building stones of human

versions. Already last year, two Big Pharma represen-

victims; 3000 people died eventually and more than

There is no patent. Could you patent the sun?” he

parties objecting to these patents, will describe their

to verify the accuracy of Myriad’s results. Although

existence can actually be patented. Both examples

tatives, Bayer and Pfizer, faced similar decisions by the

21,000 were paralysed for life.

answered. Salk’s superior smile at the interviewer

negative consequences in its plea before the U.S.

Myriad has not exercised its authority to stop all

show how strong technological, socio-economic and

Indian authorities.

clearly revealed how he felt about patents.

Supreme Court, scheduled to take place on 15 April

research, Myriad’s claims have had a proven chilling

cultural circumstances, the zeitgeist if you like, deter-

2013: “The claims pre-empt any use of the genes for

effect on research, as laboratories are dissuaded

mine the commercial approach and social acceptance

Piracy as a compliment

find out what was causing the polio virus. Activities

“A proven chilling effect on research”

any purpose. This has serious and urgent conse-

from pursuing scientific work that requires using the

of patented innovations and intellectual property.

Recently, Google published its open patent non-asser-

were mainly funded by government money and

In 1997 and 1998 patents for two human genes

quences for patients today, who often cannot obtain

patented genes.” The question the Supreme Court

donations from the people. Seven years later (1955)

(BRCA1 and BRCA2) were granted to Myriad Genetics,

information about their own genes and thus cannot

needs to answer in this case is this: “Are human genes

Today many developments are taking place that could

ware (OSS) developers for using Google’s patents that

the spectacular outcomes of this investigation were

a biotechnology company in Salt Lake City. These

make educated medical decisions about breast and

patentable?”

cause a turn in how we feel about protected innova-

fall under this pledge, as long as Google too would >>

In 1948 a large-scale investigation was performed to

4

EUROPEAN IP UPDATE MAY 2013

tion pledge, a promise not to sue open source soft-

EUROPEAN IP UPDATE MAY 2013

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NLO celebrates 125th anniversary:

Coming soon:

the future of protected innovation

the Unitary Patent and the Unified Patent Court Authors: M  arion Bruin | bruin@octrooibureau.nl Hanneke van Hazendonk | vanhazendonk@octrooibureau.nl

not be taken to court. It is how Google attempts to

portantly, how Nederlandsch Octrooibureau can give

social changes of the protection of innovations? How

break open the paralysing and costly patent battle in

further shape to protection in the future. How can

can they adapt their business models, and how can

the technological world. Google said the following: “It

one protect the interests of Big Pharma, so far indis-

they respond to the anti-IP mood that today exists

is a response to recent developments in the patent

pensable for the development of new drugs, if these

among large consumer groups?

marketplace, whereby companies that increasingly

interests collide with the moral obligation of the

seek the benefits of OSS in their own businesses

authorities of developing countries to also provide

Thought leaders

nonetheless launch attacks against open source pro-

these drugs to their populations? How can one stop

We seek to find the answers to these and other ques-

ducts and platforms as it suits their fancy.”

technology giants or patent trolls from collecting

tions and therefore, we will be organising interviews

patents merely for defensive, strategic reasons thus

and roundtable discussions with thought leaders in

Against 4.4 million people who had paid HBO to watch the first episode of the 3rd season of the popular TV series Game of Thrones, within a day more than one million people were watching the same episode for free after downloading it illegally. HBO didn’t seem to really mind, according to Michael Lombardo, one of its executives: “I probably shouldn’t be saying this, but it is a compliment of sorts,” Lombardo said. “The demand is there. And it certainly didn’t negatively impact the DVD sales. [Piracy is] something that comes along with having a wildly successful show on

How can one protect creative achievements when these can be copied and distributed almost for free?

this field. Participants are involved in the business

Recent developments

revocation or lapse can only occur in respect of all participating member states at

community, science, the authorities and interest

Since the update by our colleague Paul Clarkson in the November 2012 issue1,

the same time.

groups. Nederlandsch Octrooibureau will have an

important further steps were taken towards implementation of a single patent

active role in these discussions. This year and mostly

system for Europe. In December 2012, the European Parliament and the EU

A new court, the Unified Patent Court (UPC), will have exclusive jurisdiction over

on our website, we will regularly report on our quest

Council adopted the Unitary Patent regulation2 and the translation regulation3

disputes related to Unitary Patents. This means that any disputes on infringe-

for protected innovations in the future. You are kindly

and in February and March 2013, 25 EU member states signed the Agreement on

ment, validity or damages, will be brought before the UPC. A decision of the UPC

invited to make a contribution and help us highlight

a Unified Patent Court (UPC Agreement). Four months after 13 member states

on for example validity has direct effect for all participating member states. The

our vision on this matter. In November this year, at

including the United Kingdom, Germany and France have ratified the UPC Agree-

same is true for decisions of the UPC on infringement: an injunction or a declara-

the official anniversary ceremony, we will present the

ment, this agreement will enter into force. From that moment, the new unitary

tion of non-infringement has effect in all participating member states.

end results of this challenge.

patent system will be reality. In theory this could be as early as 1 January 2014, but few expect the starting date to be before late 2014.

We do not feel we are able to look ahead for another

a subscription network.”

6

With the adoption of two important regulations by the European Parliament and the EU Council and the signature of the Agreement on a Unified Patent Court (UPC Agreement) by 25 EU member states, a single patent system for Europe will soon be reality. This could be as early as January 2014, although late 2014 seems to be a more realistic estimate. The new system not only brings the new Unitary Patent, but also has important implications for existing traditional European Patents.

A single annual renewal fee will be due for the Unitary Patent, payable to the European Patent Office (EPO). The exact amounts of the annual renewal fees are

frustrating young start-ups’ innovations. How can one

60 years, the same period that went by between Salk’s

The Unitary Patent in a nutshell

not yet known, but it is expected that the renewal fee for a Unitary Patent will be

The questions we ask

protect the creative and intellectual achievements of

“Could you patent the sun?” and today’s question

The Unitary Patent will be a European Patent with unitary effect. It will be a single

comparable to the renewal fees for four to six national patents. Renewal fees will

Developments such as these have inspired Neder-

artists and writers in a time in which achievements

“Are human genes patentable?”. But it does meet our

right giving uniform protection and having the same effect in all countries that

be progressive throughout the term of the patent protection.

landsch Octrooibureau to use its 125th anniversary

can be copied and distributed almost for free, and

ambition to map future developments together with

ratified the UPC Agreement (participating member states). Limitation, transfer,

to not only look back at its history, but to look ahead

therefore many believe these products should be

clients. We will leave no stone unturned in our jubilee

as well. In our anniversary year, we will study whether

available for nothing? How can companies in different

year, and share with you the insights we gain in the

1

protected innovations have the future and, more im-

sectors respond to these technological ethical and

nearest future.

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EUROPEAN IP UPDATE MAY 2013

Paul Clarkson: Keeping your precious eggs safe in the unitary patent basket, European IP Update, November 2012, p. 4-6. Regulation (EU) No. 1257/2012 of the European Parliament and Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection. Regulation (EU) No. 1260/2012 of the European Parliament and Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

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EUROPEAN IP UPDATE MAY 2013

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Coming soon:

the Unitary Patent and the Unified Patent Court

It is the final goal that, once machine translations of high quality are available, no

gements for judges and facilities will have to be prepared in the coming year

translations of Unitary Patents will be required. During a transitional period of at

by the preparatory committee, which has been recently established under the

least six years, however, the full text of the Unitary Patent should be available in

chairmanship of Paul van Beukering from the Dutch Ministry of Economic Affairs.

English and one other official language of the Union. After the initial six years,

The rules of procedure of the court are in an almost finalised stage.

and every two years thereafter, an evaluation of the availability of high-quality machine translations into all the official languages of the Union will be made and

Parties may be represented before the Unified Patent Court either by authorised

if appropriate, the transitional period will be terminated. In any event the transi-

lawyers or by European Patent Attorneys having an appropriate litigation certi-

tional period will lapse after twelve years. Translations may still be required in the

ficate. For patent proprietors this has the advantage of working with the same

event of a dispute relating to e.g. infringement.

attorney both before the EPO and the Unified Patent Court, which may help in reducing the costs associated with litigation.

The grant procedure for the Unitary Patent is governed by the European Patent Convention and conducted by the European Patent Office in Munich or The

UPC jurisdiction over traditional European Patents

Hague. In fact the procedure up to grant does not change and is identical for a

The new court will have exclusive jurisdiction over Unitary Patents. It is important

regular European bundle Patent and a Unitary Patent. Once a patent is granted,

to note that once the new system is in force, this same Unified Patent Court will

the patentee can select a Unitary Patent, a traditional European bundle Patent

also have jurisdiction for existing and future traditional European bundle Patents.

or a combination of both (see below). If a Unitary Patent is desired, a request for

For European bundle Patents the jurisdiction of the UPC is non-exclusive for a

conversion needs to be filed within one month of the date of publication of the

transitional period of seven years5, thereafter it will become exclusive. During

grant of the European Patent. The unitary effect of a granted European Patent

the transitional period, actions related to European Patents can still be brought

third party in the meantime have started proceedings before a national court,

Patent with unitary effect (Unitary Patent), optionally in combination with a

will be registered in a new Unitary Patent Register to be kept by the EPO.

before national patent courts. Jurisdiction of the UPC over traditional European

then “opting in” is not possible anymore.

traditional European Patent for countries that are not participating in the unitary patent system.6 It will likely be possible to choose for a Unitary Patent and file a

bundle Patents implies that these patents too can be invalidated in a single All in all, the new system will be more consistent and probably less costly than

action with effect for all participating member states or that a declaration of

Opting out can be done at any time during the lifetime of the patent (applicati-

divisional with a slightly different scope for which the traditional European route

the existing European bundle Patent. A potential drawback for patent proprie-

(non)infringement can be obtained in a single action with effect for all participa-

on), as long as the transitional period has not expired yet, and unless someone

will be chosen or vice versa.

tors is, however, that a Unitary Patent can be invalidated in a single action with

ting member states. It goes without saying that a decision of the UPC will have

has started proceedings before the UPC relating to the European Patent. Patent

effect for all participating member states. What is less known is that the same

further significant implications for European Patents validated for those states

owners of existing European Patents wishing to avoid a centralised procedure

Already now, proprietors of traditional European Patents should consider

drawback will also exist for traditional European Patents without the concomitant

not party to the Unitary Patent regulation.

before the new court should seriously consider opting out as soon as the new

whether they wish to make use of the opt-out possibility.

advantages of the new system, unless patent proprietors timely opt out from

system is in place. For companies or individuals that wish to start a procedure to

Opting out

revoke an existing European Patent, it makes sense to initiate an action before

What will be the better choice will depend on a number of factors including the

Patent proprietors of existing or future European bundle Patents have, however,

the UPC as soon as possible after the system is alive, in order to pre-empt the

(yet unknown) costs for a Unitary Patent, the number of countries wherein pro-

The Unified Patent Court

the possibility to opt out from the jurisdiction of the UPC. The opt-out has to

patent owner from opting out.

tection is desired, the strength of the patent and the cost-effectiveness of the

The new court will comprise a Court of First Instance and a Court of Appeal. The

be registered before expiry of the seven-year transitional period5, and continues

Court of First Instance will have central divisions in Paris, Munich and London4

throughout the life span of the patent. Once such opt-out is registered, a third

Choices to be made

which option is the best will vary from case to case. It goes without saying that

and local or regional divisions in countries that wish to set up such divisions. The

party cannot start proceedings against the patent before the UPC. The patent

Once the new system is in place, applicants for a European Patent will have new

the advisors of Nederlandsch Octrooibureau are closely following the deve-

Court of Appeal will have its seat in Luxembourg. Many practical arrangements

proprietor has the possibility to “opt in” again at any time, for example in case

choices to make. Upon the grant of their patent, applicants can choose for a

lopments regarding the new system and can help you in making the relevant

for the court, such as governance and budgetary arrangements, training arran-

he wishes to start centralised proceedings against an alleged infringer. Should a

traditional European Patent validated in countries of choice or for a European

strategic choices.

the new system.

L ondon: cases involving chemistry, pharmaceuticals, metallurgy and human necessities (IPC sections A and C). Munich: cases involving mechanical engineering (IPC section F). Paris: cases involving physics, electronics, computer sciences, paper and textiles (IPC classes B, D, E, G and H). The transitional period is extendible to 14 years and maybe even to 21 years.

4

new Unified Court system. There is no straightforward “one size fits all” strategy:

EPC Contracting states that are not a member of the EU such as for example Switzerland, Turkey and Norway or EU member states not participating in the unitary patent system such as Italy and Spain.

6

5

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EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013

9


The coronation of the Dutch Prince Willem Alexander and IP

Author: Yvonne Noorlander | noorlander@octrooibureau.nl

NLO headquarters are located in the city of The Hague, home to the Dutch royal family. This is why, the coronation of our prince Willem Alexander is a special event we like to pay attention to. Especially since the Royal House of Orange and Intellectual Property Right are closely entwined.

Community trademarkS:

IS USE IN ONE MEMBER STATE SUFFICIENT? Author: Peter Simonis | simonis@octrooibureau.nl

The Community Trademark Regulation states that a trademark is revocable if it has not been put to genuine use within a continuous period of five years. It is therefore important for trademark owners to know what is meant by ‘genuine use’. Will use in one member state be sufficient to maintain a registered Community trademark? The reason why trademarks that have not been in

be disregarded when deciding whether or not a

continuous use are revocable relates to the princi-

Community trade mark has been put to genuine

ples of fair competition. A trademark which stays

use. This means that even after this decision, it

valid even though it is not genuinely in use, may

remains unclear whether use in only one member

prevent competitors from using a similar trademark.

state will be sufficient to maintain the right to a

taken into account. It is up to the national courts

registered trademark.

to decide whether or not the use of the trademark

Patent as a royal favour

Kingly Merchandise

After we had learned that Maxima was Prince Willem

This would constitute an obstacle for the free move-

From times immemorial, in most countries a patent

For instance, the guildhall in Amsterdam launched a

Alexander’s new girlfriend, dozens of trademark

ment of goods and services.

was mainly a favour granted by the king or queen

Blue Delftware decorative plate in commemoration

registrations were applied for that included the

to a citizen or a company and not an exclusive right

of Queen Beatrix’s reign while Royal Leerdam Crystal

name MAXIMA. After announcing the name of our

intended to protect a new product, method or new

launched an orange ‘King Willem Alexander’ vase in

technology as it is intended for now. For instance,

honour of the succession.

has been sufficient to constitute genuine use, in Use in one member state not by definition

the sense that the trademark served to create or

Recently, the European Court of Justice gave its

insufficient

maintain market shares for the goods or services for

newborn crown princess AMALIA, the name AMALIA

decision on a case in which the question came up

According to the Court, however, this does not

which it was registered.

became an extremely popular trademark name.

when a Community trademark has been genuinely

mean that use in only one member state automati-

AMALIA has since been registered as a trademark

used. This is an important question in particular if it

cally means that genuine use of the trademark is out

Therefore, it is not possible to determine the thres-

(monopoly) to conduct sea trade in the area east of

Original marketing

for, amongst others, the following goods and

concerns a Community trademark, because these

of the question, because under certain circumstan-

hold for minimal use. It all depends on the charac-

Cape of Good Hope and west of the Strait of Magel-

The succession to the throne has also been a great

services; plants, cutlery and insurances. Shortly after

trademarks are valid in all 27 member states of the

ces there is a possibility that the market on which

teristics of the market concerned, the nature of the

lan. Another example of how the royal family and

source of inspiration for frivolous marketing. Beer

announcing the Prince’s succession to the throne,

European Union.

the Community trademark is used, is in practice

goods or services protected by the trade mark and

Intellectual Property Rights are entwined is the fact

brewer BAVARIA, famous for their humorous com-

at least three Benelux device marks were applied for

restricted to the territory of only one member state.

the territorial extent and the scale of the use as well

that our very first patent law became effective back

mercials with well known actors like Charlie Sheen

registration containing the element KINGSDAY.

Territorial scope of the use

In such a case, use of the Community trademark on

as its frequency and regularity.

in 1817 under King Willem I.

and Micky Rourke, has been referring to the Dutch

One of the aspects which are important when

that territory may satisfy the conditions for genuine use of a Community trademark.

the Dutch East India Company obtained a patent

Community trademark or national trademark?

Prince’s reputation as a beer lover by replacing the

Creative efforts princely rewarded by Intellec-

globally analyzing whether or not it is a matter of

Succession inspires the business community

throne with a bar stool in one of their advertise-

tual Property

genuine use, is the territorial scope of use. The

The Dutch royal family is still very popular in the

ments. In its advertising campaign the peppermint

Despite the intended austere celebrations due to

Court of Justice had to consider whether or not use

An example that has been mentioned before was

ask themselves if their trademark is genuinely in use.

Netherlands. After our current Queen, Queen

trademark KING, famous in the Netherlands, tem-

the economic crisis, the ceremony will involve the

of a Community trademark in a single member state

the market for ice skates. Use of a Community tra-

Even though it depends on all relevant circumstances,

Beatrix, announced her abdication, media attention

porarily changed its name from KING into ALEX (the

necessary expenses. At the same time advertising

was sufficient to satisfy the requirement for genuine

demark for ice skates, which is restricted to only the

it is possible that a Community trademark is revocable

has been growing exponentially. Since the announ-

nickname of our king-to-be).

agencies, companies and trademark holders turning

use in the Community.

Netherlands, might be sufficient.

because it has been used in only one member state.

It is important for Community trademark owners to

In that case, a national trademark may be the better

this event to their advantage can seriously benefit

cement on 28 January 2013, companies have been trying to profit from the royal family’s increased

Royal names as a trademark

from the festivities. The more so if they manage to

The Court stated that the requirements for genuine

All facts and circumstances

option. Should you have any questions regarding the

popularity.

News about the royal family also interferes with

properly protect the results of their (creative) efforts

use do not refer to the territories of the member

The Court points out that the territorial scope is

validity of your Community trademark, please contact

trademark registration and trademark protection.

by means of the Intellectual Property Rights.

states and that the borders of the countries should

merely one of several circumstances that should be

your trademark attorney at NLO.

10 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 11


The revival of cross-border injunctions Authors: Mari Korsten | korsten@octrooibureau.nl Marion Bruin | bruin@octrooibureau.nl Jaap Bremer | Lawyer at BarentsKrans

Not only did the courts assume jurisdiction to rule

vention and thus limited the possibilities to obtain a

on infringement in the Netherlands, they also ruled

cross-border injunction from the Dutch courts.

to parallel IP rights in other European countries (eg,

Past ECJ practice

terpret Article 16(4) of the Brussels Convention (now

* Interlas v Lincoln*, Supreme Court, November 24

In 2006 the cross-border injunction practice was

Article 22(4) of Regulation 44/2001), which states

1989, BIE 1991, 23, p86; NJ 1992, 404). If neces-

further restricted by two ECJ decisions. In *Roche

that the court of the member state in which an IP

sary, the Dutch courts would apply foreign law to

v Primus* (C-539, July 13 2006) the ECJ held that

right has been registered has exclusive jurisdiction

non-Dutch patents in order to assess validity and

Article 6(1) of the Brussels Convention did not apply

to assess the right’s validity. The question addressed

infringement outside the Netherlands. The Dutch

in European patent infringement proceedings in-

in the case at issue was whether this provision was

courts issued cross-border injunctions in cases on

applicable only to proceedings that were started

the merits and in preliminary proceedings. For this,

with the goal of declaring a patent invalid, or also to

the courts relied on a broad interpretation of Article A cross-border injunction, which enables a patent

This is a significant development for patent holders,

respect to claims relating to an unlawful act, a de-

6(1) of the Brussels Convention (now Article 6(1) of

holder to start proceedings in a single country

such as pharmaceutical companies, since conducting

fendant may also be sued before the courts of the

Regulation 44/2001).

instead of all countries in which its patents are

infringement proceedings in multiple EU countries is

member state where the unlawful event occurred

infringed, is a great time and money saver. The

very costly in terms of both time and money.

or may occur. In addition, according to Article 6(1), if

However, the Dutch practice was not followed in

the case involves multiple defendants domiciled in

other European countries, and courts in several EU

Dutch courts used to issue such injunctions routi-

Lamellen und Kupplungsbau Beteiligungs KG* (*GAT v LuK*, C-4/03, July 13 2006) the ECJ was asked to in-

on infringement outside the Netherlands in relation

The European Court of Justice recently breathed new life into the phenomenon of cross-border injunctions – a cost-effective tool originally developed by the Dutch courts to stop infringement.

In *Gesellschaft für Antriebstechnik mbH & Co KG v

Courts in other countries strongly opposed to cross-border injunctions.

proceedings in which a defendant in a patent infringement case pleaded the invalidity of the patent by way of defence against the infringement claim. The ECJ ruled that the exclusive jurisdiction provided for by Article 16(4) applied to the proceedings in which the issue of a patent’s validity was raised (eg, a nullity

nely, both in cases on the merits and in preliminary

EU Regulation 44/2001

various countries, they may all be sued in a country

countries – in particular, the United Kingdom – stron-

proceedings, but over the years this practice had

The question of where a party that has committed

where any one of them is domiciled, provided that

gly opposed it. In view of this growing criticism, in

been considerably limited by the European Court

patent infringement can be sued is a matter of

the claims against them are so closely connected

1998 the Court of Appeal of The Hague held in two

of Justice (ECJ). However, a recent ECJ decision

private international law. In Europe, the jurisdiction

that it is expedient to hear and determine them to-

decisions (*EGP/Boston Scientific*, April 23 1998, BIE

(*Solvay v Honeywell*, C-616/10, July 12 2012)

issue is governed by EU Regulation 44/2001 on

gether to avoid the risk of irreconcilable judgments

2002, 8, p25 and *Boston Scientific/Cordis*, Novem-

volving a number of companies domiciled in various

regarding the infringement of a European patent

appears to have reversed the trend, at least as far as

jurisdiction and the recognition and enforcement of

resulting from separate proceedings.

ber 26 1998, BIE 2002, 10, p46) that the Dutch courts

contracting states in respect of acts committed in

has no jurisdiction to assess the infringement of the

cross-border measures in preliminary proceedings

judgments in civil and commercial matters.

could assume jurisdiction for co-defendants domici-

one or more of those states, even where those com-

‘foreign’ parts of the patent if the validity of such

Past Dutch practice

led outside the Netherlands in relation to infringe-

panies belonged to the same group and may have

parts has been challenged. This effectively barred

are concerned. The ECJ stated that if one or more

action or a nullity defence) at the time the case was brought or at a later stage in the proceedings. This means, in essence, that a national court that is asked to grant a cross-border injunction in proceedings

companies infringe the same European patent with

According to the general rule stated in Article 2 of

The practice of granting cross-border injunctions in

ments committed in their own country only if there

acted in an identical or similar manner in accordance

cross-border decisions in cases on the merits, as the

the same product in multiple EU member states, the

Regulation 44/2001, a party whose domicile is in a

patent cases started in the Netherlands in the 1990s.

was also a Dutch defendant – the so-called ‘spider in

with a common policy elaborated by one of them.

invalidity of the patent in question was nearly always

patent holder may be entitled to claim and obtain a

EU member state may be sued in the courts of that

The Dutch courts considered that they had jurisdicti-

the web’, that was coordinating the infringing acts

This effectively meant that, according to the ECJ,

argued by way of defence against the infringement

cross-border injunction before the court of one of

member state, irrespective of its nationality. Howe-

on in many of the international patent disputes that

of the co-defendants. This considerably narrowed

Article 6(1) did not allow for the ‘spider in the web’

claims.

those countries that is applicable in all those states.

ver, Article 5(3) of the regulation states that with

were filed.

the interpretation of Article 6(1) of the Brussels Con-

doctrine developed by the Dutch Court of Appeal.

>>

12 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 13


The revival of cross-border injunctions

However, after *GAT v LuK* the Dutch courts relied

fore the Hague District Court. In these proceedings,

Furthermore, the ECJ held that Article 31 of Re-

as long as the assessment of

the Dutch courts. The ECJ may

on Article 31 of Regulation 44/2001 to adopt the

Solvay requested, among other things, a provisional

gulation 44/2001 allows a national court to grant a

the patent’s validity is purely

have found that the Dutch provi-

position that it was still possible to issue cross-bor-

cross-border injunction for the relevant countries

claim for a provisional injunction based on a national

preliminary. This applies not

sional measure procedures create

der injunctions in preliminary injunction proceedings

in which Honeywell was claimed to have infringed

part of a European patent even if the invalidity of

only to defendants domiciled in

no risk of conflicting decisions

(eg, *Bettacare v H3 Products*, Preliminary Relief

Solvay’s patent. In its defence, Honeywell argued

that patent is asserted and another national court

the country where the court is

because the assessment made

Judge of The Hague, September 21 2006; *PTC v

that the patent was invalid. The Hague District Court,

would have exclusive jurisdiction to decide on that

located, but also to a group of

of the patent’s validity is purely

APE Holland*, Preliminary Relief Judge of The Hague,

which had until then assumed that it had jurisdiction

point under Article 22(4) of the regulation. The ECJ

defendants from different coun-

preliminary; however, it remains

October 4 2011, www.iept.nl (IEPT20111004); and

to grant preliminary cross-border injunctions, refer-

observed that Article 22(4) seeks to avoid conflicting

tries, provided that one of them

to be seen whether courts in

*YPM v Yell*, The Hague Court of Appeal, July 12

red some preliminary questions to the ECJ.

decisions on the validity of a national part of a Euro-

is domiciled in the country where

other jurisdictions will also find

pean patent. It further noted that although in such

the court is based, and provided

that their national procedures for

a situation, the application of the jurisdiction rule

that they have all committed the

granting provisional or preliminary

based on Article 31 can be affected by Article 22(4),

same infringing acts (eg, selling

this did not apply in the case at hand. The Hague

the same infringing product) in the same countries.

held that there had to be a real link between the

by the ECJ (for a non-Dutch perspective on *Solvay*,

District Court had made it clear that in the ongoing

Therefore, the ECJ appears to have re-opened the

subject matter of the measures sought and the

see for instance Trimble, M, “*Solvay v Honeywell*

proceedings in which a provisional cross-border

door to cross-border enforcement practice, which

territorial jurisdiction of the member state of the

and an Alternative Route to a Central Patent Court

injunction had been requested, it would not make

was previously closed by the *GAT v LuK* and *Roche

court before which those measures are sought. For

in Europe”, Patently-O, September 3 2012). However,

a final decision on the validity of the foreign parts

v Primus* judgments.

instance, in *Boehringer Ingelheim v Teva* the court

an opening has now been created at a European

of the European patent, but rather would make a

ruled that there was a real connecting link because

level and it will be interesting to see whether (and if

(preliminary) assessment of how the court with juris-

the defendants were domiciled in the Netherlands.

so, in what circumstances) courts in other EU coun-

2011, www.iept.nl (IEPT20110712)). According to Article 31, proceedings may be started before the court of a member state for provisional measures, even if under the regulation the court of another member state has jurisdiction as to the substance of the matter (ie, the validity of the patent). According to the Dutch courts, this meant that the court still had jurisdiction to grant a preliminary cross-border injunction, even if the validity of the patent was challenged. *Solvay v Honeywell* In the eagerly awaited decision in *Solvay v Honey-

well*, the ECJ was asked to provide its views on

ECJ: the Dutch practice of granting cross-border injunctions on a preliminary or provisional basis is permitted.

cross-border injunctions and, in particular, on the

This certainly appears to be how the Dutch courts

injunctions fulfil the criteria set

diction under Article 22(4) would rule on the validity

have interpreted *Solvay v Honeywell*, as illustrated

of the patent. In addition, the Hague District Court

by the decisions granting such injunctions handed

On the other hand, if the measure claimed (ie, an

had indicated that if it came to the conclusion that

down since July 2012. For instance, in *Boehringer

order to cease and desist from infringing a foreign

Unified Patent Court

there was a reasonable, non-negligible chance that

Ingelheim v Teva* the preliminary relief judge of the

part of a European patent) must also be complied

With the reality of the unitary patent and the

the foreign court with jurisdiction under Article 22(4)

Hague District Court ordered Teva to refrain from

with abroad, and all of the defendants are domiciled

Unified Patent Court (UPC) getting closer each day,

tries will also grant cross-border injunctions.

Dutch practice of granting such injunctions as an

The ECJ reiterated, with reference to its judgment in

ruled that the foreign part of the patent was invalid,

acting unlawfully against Boehringer Ingelheim

abroad, it is unlikely that a court will assume jurisdicti-

the possibility of dealing with infringement in all

interim measure, even after *GAT v LuK* and *Roche

*Roche v Primus*, that for there to be a risk of irre-

the request for a cross-border injunction would be

by promoting or facilitating the infringement of

on under Article 31 to grant a cross-border injunction.

participating countries through a single procedure

v Primus*. In *Solvay v Honeywell* a number of

concilable judgments, there must be a risk of diver-

rejected. Under these circumstances, the ECJ held,

Boehringer Ingelheim’s Portuguese patent, even

For instance, in *Delaval v Boumatic* (Preliminary Re-

before the UPC (regardless of whether patent vali-

companies from the Honeywell group domiciled in

ging decisions arising from the same situation of law

there was no risk of conflicting decisions and the Ha-

though Teva had argued that the Portuguese patent

lief Judge of The Hague, December 7 2012), in which

dity is challenged) is also getting nearer. However, as

different EU jurisdictions, including the Netherlands,

and facts. However, in the case at hand the Honeywell

gue District Court could assume jurisdiction to grant

was invalid. The judge held that even though he had

the defendant was domiciled outside the Nether-

the UPC proceedings will potentially prove risky for

had marketed the same product in several EU juris-

companies were all accused of having committed the

a cross-border injunction, even though the invalidity

to assess the validity of the foreign patent, there

lands, the judge ruled that the court did not have ju-

patent holders and applicants (effectively putting all

dictions covered by a European patent owned by

same infringements (ie, selling the same product in

of the patent had been asserted.

was no risk that the decision would conflict with

risdiction to grant a an injunction with effect outside

of their eggs in one basket), they may opt out of the

Solvay. The product was said to infringe the relevant

all of the relevant EU member states). Therefore, they

the decision on the merits of the Portuguese judge

the Netherlands against a Swedish defendant as there

UPC during the transitional period, preferring the

national parts of the European patent, excluding the

had all committed the same infringement in the same

After *Solvay v Honeywell*

since the Dutch judge did not give a final ruling on

was no real connecting link between the requested

option of possible cross-border injunctions.

Netherlands.

territories. This, said the ECJ, could lead to irreconcila-

The ECJ appears to have confirmed that the Dutch

the validity of the Portuguese national patent.

cross-border injunction and the Dutch territory. Published in

ble judgments. In other words, in such circumstances,

practice of granting cross-border injunctions on a

Solvay had commenced infringement proceedings

all defendants could be sued before a single national

preliminary or provisional basis, even of the validity

However, a point to bear in mind is that in *Van Uden

An interesting issue is whether courts in other EU

Intellectual Asset Management Magazine “Patents in

on the merits against the Honeywell companies be-

court, based on Article 6(1) of Regulation 44/2001.

of the patent has been disputed, is permitted,

v Decoline* (C-391/95, November 17 1998) the ECJ

countries will interpret *Solvay* in the same way as

Europe”, April 2013.

14 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 15


Seizure by Customs: and then what?

Author: Friso Onderdelinden | onderdelinden@octrooibureau.nl

The Netherlands is a renowned transit country. The ports of Rotterdam, Amsterdam and Schiphol Airport are the main locations where hundreds of millions of tons of goods are transported every year. Belgium is also a significant transhipment country. After the port of Rotterdam, the port of Antwerp is the largest port in Europe, while the port of Zeebrugge and Ghent also handle a growing number of goods. As such, the Benelux serves as the “gateway” to the vast internal European market. 16 EUROPEAN IP UPDATE MAY 2013

Counterfeit goods

proprietor may state which shipping company trans-

Customs Watch

European Commission statistics show a growing

ports the goods and from what place. You may also

In daily practice, sometimes even proprietors have

number of goods being stopped by the European

provide information about the type of containers

difficulty answering the question as to whether the

Customs authorities. In addition to legally prohibited

or boxes in which goods are shipped or with which

stopped goods do infringe their IP rights. In additi-

goods (e.g. narcotics and weapons), counterfeit

other goods they are carried at the same time. And,

on, proprietors may face a whole range of additional

goods are introduced to the European market on

you can let Customs know how genuine products

questions after suddenly receiving an email from

a large scale. The European Commission’s statistics

can be distinguished from counterfeit goods. In

Customs. Questions that may arise are for instance:

reveal that medicines, packaging materials, clothing

other words: having your rights registered with

what exactly are the possibilities? Will I be held liable

and cigarettes rank highest amongst products stop-

Customs, will considerably increase your chances of

if it turns out the goods involved are not counter-

ped by Customs, with Viagra, Nike and Marlboro as

having counterfeit goods stopped. Customs figures

feit? Is it possible not to take action this time? And

popular copied products. Electronic devices such as

collected by the EC show that the vast majority

will Customs proceed in case of larger quantities

mobile telephones and personal accessories are also

(97%) of all stopped goods on the basis of alleged IP

next time? What are the costs involved? In other

often intercepted by Customs. According to some

infringement, are goods owned by a proprietor with

words: what should proprietors do after receiving

reports, income from counterfeit clothing even

a Customs registration. In this context, it is also inte-

an e-mail notification from Customs?

exceeds drug trade revenues.

resting to know that Dutch Customs usually adopt a rather cooperative attitude when it comes to rights

In order to relieve our clients as much as possible,

The Port of Rotterdam alone welcomes approxi-

registered with Customs. Dutch Customs officials

NLO has recently introduced a convenient service

mately 12 million containers annually, about 5%

are known for their (pro)active approach towards

for proprietors of trademark and design rights. It is

of which is checked. Pursuant to the European

potentially infringing goods. In general, the (EU)

called “Customs Watch”. In order to effectively stop

Anti-Piracy Regulation, Customs officials are entitled

Customs officials are authorized to proceed if there

the import and transit of counterfeit goods in the

to stop goods which they suspect of infringing in-

are well-founded indications that the relevant items

European Union, this service is not only available

tellectual property rights and inform the proprietor.

will be brought onto the European market. In fact,

for the Benelux countries but also for practically

However, it is often difficult for Customs officials

information provided by the proprietor may lead to

all other European countries. For this purpose, we

to determine the authenticity of a product. When

an indication of counterfeit products entering the

closely cooperate with an external party specialized

in doubt, the Customs team may decide to allow

EU market.

in Custom cases. Our new service will allow proprietors to indicate precisely which rights need to be

the relevant products to enter the country (e.g. the European Market) . Up to date information of the

Time Frame

monitored in which countries in Europe and what

proprietor can therefore be of great assistance to

For obvious reasons the Customs authorities will

Customs’ focus areas should be. On request, we will

the Customs officials.

have to take a decision quickly after stopping the

represent you before the relevant authorities and

goods in question. If your IP right has not been

advise you directly about the actions required. Pos-

Registering rights with Customs

registered with Customs, you will have to respond

sible follow-up actions (e.g. summons to destruct

Considering the above, we highly recommend

to an email sent by Customs within three (working)

goods) will be taken care of cost-efficiently. Other IP

to actively inform Customs of your IP rights. The

days, which may end up in your spam filter. However,

rights such as patent rights can be registered with

anti-piracy Regulation provides the proprietor of an

when you do have a registration, an automatic peri-

Customs as well. In this way we not only protect

IP right with the possibility to request Customs to

od of 10 (working) days is granted to the proprietor

your IP rights but we also hope to proactively restrict

actively monitor certain (flows of) goods in particular.

during which he must indicate whether or not the

as much as possible the damage caused by counter-

To this end, the proprietor can provide the Customs

goods are indeed infringing. Moreover the e-mail

feit goods. You will find additional information about

officers with detailed information that may be deci-

will be sent to the contact person provided by the

this service at www.nlo.nl/en

sive in spotting counterfeit goods. For instance, the

proprietor on the application form.

EUROPEAN IP UPDATE MAY 2013 17


Healthcare applications in the cloud Authors: Rolf Suurmond | suurmond@octrooibureau.nl

Cloud computing may help streamline data processes in a range of industries, but it also presents challenges for intellectual property rights holders, says Rolf Suurmond.

Healthcare is a field that has undergone great

te medical records in the cloud, giving them full

number of ICU specialists to monitor a large number

These features of cloud computing give rise to many

provisions on induced or

technical developments over time. For example,

control over their data. However, the term ‘cloud

of patients. This not only reduces the amount of la-

legal issues, including issues of intellectual property,

indirect infringement in

radiology departments have progressed from

computing’ has only started to appear prominently

bour involved in monitoring patients, but is believed

privacy, and liability. Since it is a relatively new field

their legislation, depen-

acquiring and reviewing X-ray images on film into a

in US patent publications since 2011. Since then, the

to improve the quality of monitoring, leading to a

of technology, there is a great potential for patent

ding on the circumstances this may lead to a more

Infringement of claims defined in terms of functi-

fully digital imaging environment. Electronic medical

number of published patent applications relating to

reduction in the number of complications and the

applications to be filed, and by the increasing num-

difficult position for patent owners.

onality provided to the end user may be easier to

records are replacing paper-based patient records,

cloud computing has grown dramatically.

average ICU stay.

ber of published applications in the field of cloud

to improve administrative efficiency and make

show than claims that define an invisible algorithm

computing, it can be seen that companies are eager

In cloud computing, services are provided from a re-

that is performed ‘in the cloud’. However, when

to fill the void.

mote data centre that is normally inaccessible to the

a claim does not define all the features that are

public. Operators of cloud computing hardware do

essential for the invention in their proper inter-

patient information instantly available to authorised

In healthcare, the possibilities of cloud computing

IP implications

healthcare personnel without geographic limitations.

are seemingly even wider, because for some clinical

What exactly does the term ‘cloud computing’

Having the information available in digital form also

tasks it does not matter where they are performed.

mean? The word ‘cloud’ deliberately indicates a

By the very nature of cloud computing, it may be

not generally provide details about the implementa-

relationship, the patent application may be refused.

means that data can be communicated quickly and

There is no need for a radiologist to be working in

certain vagueness. In the cloud, computer functio-

unclear which legal entity brings an invention to

tion of their data centres. Therefore, there is no con-

The patent attorney has to find a balance between

cost-efficiently.

the same hospital where the images are genera-

nality is offered as a service rather than as hardware

practice, and in what jurisdiction. Worse, multiple

crete product that can be reengineered to find out

these two interests.

ted, when the images are sent into the cloud to

and software that is sold as an object of property.

parties located in potentially multiple jurisdictions

how it works. Process steps performed in the cloud,

Nationwide electronic health record systems also

be reviewed using a web application that can be

In some cases, users of a cloud service pay only for

may together carry out a method, wherein no

as well as details of the physical implementation of

Since cloud computing based inventions are typically

use distribution servers outside the local hospital

accessed from anywhere. By using cloud computing,

the services they use. The user of the service does

single party infringes a patent claim, but the parties

servers and their messaging protocols within a data

computer-implemented, the legislation applicable

network. This generally means outsourcing data sto-

computer hardware may be utilised more efficiently

not need to know where and how the service is

together do. According to the patent law in most

centre, may be impossible to uncover by using pu-

to software patents is equally applicable to cloud

rage and data processing to third party organisations

and software deployment may be easier and more

implemented, or even who owns the hardware on

countries, to show direct infringement of a method

blicly available information. Consequently, it may be

computing. In Europe, this means that a technical

which operate hardware in data centres that are not

uniform.

which the user’s confidential data is stored, because

claim, it is necessary to prove that a single party per-

difficult to make a prima facie case of infringement.

effect is required to avoid an excluded subject mat-

the service provider may hire computer resources

forms all the steps of the claimed method within the

under the control of the healthcare organisation.

ter rejection. In the US, unduly abstract processes

Such a trend is also prominent in consumer pro-

For example, Philips eICU is a product that uses soft-

from other cloud infrastructure providers. Moreover,

territory covered by the jurisdiction of the patent.

These aspects can make it more difficult to enforce

should be avoided in patent claims. Careful drafting

ducts, such as the email and mapping applications

ware, video and audio feeds and real-time patient

the geographic location, even the country, in which

The legal situation is not always clear when some of

patents. During the filing and prosecution of patent

of patent claims may help to avoid such rejections.

provided by Google and other companies. Google

vital statistics to hook patients in intensive care units

this hardware is located, may be unknown to the

the method steps of a claim are performed by third

applications, this may be addressed by drafting

and Microsoft have already launched ‘health vault’

(ICUs) in multiple hospitals to central monitoring faci-

client. The data may be divided over a plurality of

parties or on a computer outside the jurisdiction

patent claims that define only those features of an

Published

products thatfirst allow patients to store This article was published in LISPR 2012.their comple-

lities manned by ICU specialists. This enables a limited

data centres all over the world.

of the patent. Although many jurisdictions include

invention that are under control of a single party.

This article was published in WIPR Nov/Dec 2012.

18 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 19


Putting an end to trademark infringement in social media Author: Yvonne Noorlander | noorlander@octrooibureau.nl

Trademark use and therefore also trademark infringement have been increasingly shifting from the offline to the online world. How should we deal with trademark infringement on the internet, and more specifically, how can we put an end to trademark infringement in social media?

The Community Trademark laws apply to both the

A (social media) website can come about and grow

of new social media, it is important to swiftly create

Taking measures against trademark use

to advertise the product involved. In social media,

Acting against social media accounts by means of a

online and the offline world. A trademark owner may

at a high speed. For instance, Pinterest was born in

an account that consists of the trademark name in

in social media

however, one can successfully object to use of a

complaints procedure holds certain possibilities for

take action against a later trademark that is identical

March 2010 as a beta version. One could only visit the

order to avoid cyber squatting. Taking action against

While putting an end to trademark infringement in

trademark by resellers, for instance if an unauthorised

trademark holders. Nevertheless, one needs to consi-

or confusingly similar to the earlier trademark and

website upon invitation. Since August 2012 it is possi-

an account consisting of a trademark owned by a

the offline world requires a warning, opposition pro-

reseller is involved. In the offline world, descriptive

der the implications of such an action. Taking measu-

that is used for identical or similar goods or services,

ble to sign up uninvited and for free. At the moment,

third party (not being the trademark owner) can

ceedings or a court decision, in many cases trademark

word elements in a registered devicemark cannot

res against social media might attract bad publicity

or when the use of the later trademark takes unfair

Pinterest already has more than ten million users and

be a time-consuming and an expensive process. In

infringement in social media is much easier to stop

easily be invoked against an existing devicemark that

and perhaps cause even greater damage. Each and

advantage of, or is detrimental to, the distinctive

numbers are rising every day. Social media accounts

addition to cyber squatted social media accounts,

as many social media have designed a complaints

consists of the same descriptive word elements.

every situation should be carefully considered. If help

character or the repute of the earlier trademark

are created at top speed which means trademark

trademark owners may also have to deal with

procedure, usually in the form of a complaints form.

owners may not be on time to open an account

so-called suck sites. On these social media accounts,

On this form complainants must state which (trade-

According to Community trademark law, descriptive

Social media accounts

for their own trademarks because a third party has

trademarks are discredited by announcing that the

mark) rights they oppose to and which steps should

word elements do not qualify for trademark protecti-

This year (2013), NLO will be launching a new watch

Twitter, Facebook and LinkedIn are perhaps the best

beaten them to it.

product or service involved is bad (sucks). In the event

be taken with regard to the accounts in question. For

on. In the event of a complaints procedure against a

service to track trademark infringements on the

of a cyber squatted social media account or a suck

instance, one may ‘transfer the (infringing) accounts’

(social media) website, usually the possible descriptive

internet and report these to you so timely action is

known social media. A newcomer such as Pinterest

is required, the NLO team will be pleased to assist.

may sound less familiar to you. Pinterest is a website

‘Suck sites’ and cyber squatting of social media

site on social media websites, different rules apply for

or ‘remove the (infringing) accounts’. In general, the

character of a trademark is looked at less strictly;

possible. Further information will soon follow on our

on which one may design a virtual notice board

accounts

different social media websites as to how one may

threshold for granting a request concerning social

complaints based on a device marks that exists of

website. If you have any questions in the meantime

including images of different areas of interest such as

When it comes to social media accounts the motto

claim/remove an account, or discontinue negative

media is fairly low. According to the law and jurisdic-

descriptive word elements can usually be invoked

about this new service, please do not hesitate to

fashion, cooking, religion and business information.

is this: prevention is better than cure. At the birth

publicity.

tion, resellers may generally use a trademark in order

successfully.

contact us.

20 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 21


A Right to Repair or Re-Manufacture in Disguise? Author: Paul Clarkson | clarkson@octrooibureau.nl

On 13th March 2013, the Supreme Court of England and Wales handed down a decision in the case of Schütz (UK) Limited v Werit (UK) Limited in relation to the repair of Intermediate Bulk Containers (IBCs). The decision is interesting in that it sheds further light on the considerations that must be made in protecting such products over an extended lifetime. It also emphasises the efforts by which the specialist IP Courts in Europe are seeking to align themselves in their interpretation of similar provisions in the law.

Background

In first instance proceedings, the issues eventually

the opinion that the distinction between repair

he held that it was a matter of judgement based on

IBCs are a familiar product throughout various

focussed on the single question of whether the

and re-manufacture depended at least in part on

the facts of an individual case and that relative value

industries and comprise a 1000 litre plastic bottle

action of replacing a bottle amounted to “making”

how the market perceived the activity. This might

would be merely one factor. A further important

surrounded by a reinforcing metal cage, usually

the patented article. The judge found that there was

depend on the expected need for repair by regular

factor was that the bottle was unrelated to the

mounted upon a pallet. They are used for transpor-

no infringement, since “the inventive concept of

replacement of a component subject to wear and

underlying inventive concept: as the first instance

ting many different bulk liquids and can be reused

[this claim] is wholly embodied in the Schütz cage”.

tear. It might also be reflected by the relative worth

judge had correctly adduced, this lay entirely in the

countless times. Nevertheless, the plastic bottle

Schütz appealed and achieved a different outcome.

of the used product before and after repair. The BGH

construction of the cage. Most decisive appears to

usually has a shorter lifetime than the outer cage

The Appeal judges, in analysing earlier case-law, held

remitted the case for a determination as to what

be the underlying principle of exhaustion:

would need regular replacement for the IBC to

and must occasionally be replaced. IBCs have been in

that once the bottle was removed, the IBC ceased

proportion of used IBCs were returned to Schütz or

“In principle, a purchaser of a patented article, as

achieve its working lifetime.

use for many years and the patent in dispute, dating

to exist and that replacement with a new bottle

reconditioners at no charge.

I see it, should be taken as entitled to make such

from 1995, was not directed to the underlying prin-

amounted to making of a new IBC, thus infringing

ciple of such containers. It was directed instead to

the patent. Werit was granted leave to appeal to the

an improvement in the welded construction of the

Supreme Court.

have had better chances of success. Conclusion

an assumption [that he is free to exercise control

Could different claims have achieved a diffe-

Given the careful attention that the UK Supreme

The UK Decision

over the purchased article]. Accordingly, for that

rent outcome?

Court has given to proceedings in Germany, we

The UK Court was clearly concerned to show that it

reason also, where the article includes a component

In hindsight, knowing the way in which the law will

could conclude that this decision will be definitive

was following the same approach as other European

which is physically easily replaceable and in practice

be interpreted makes claim-drafting easier. Nevert-

in tracing the line between repair and re-manufac-

Decisions of German courts

jurisdictions having the same or corresponding

relatively perishable, those features must constitute

heless, it is rarely possible to protect an action that is

ture for patented products. The decision will likely

In the meantime, the same patent had been litigated

provisions in their laws. This may be seen as parti-

a factor (which may, of course, be outweighed by

intended to be in the public domain. In the present

remain pertinent even after the proposed Unified

The defendant supplied replacement bottles for

before the German courts on the very same point of

cularly important given that judges from different

other factors) in favour of concluding that the re-

case, unless there could have been shown a novel

Court has taken over jurisdiction. Such situations

IBCs that were used by a third party to recondition

law. Both the UK and German Courts are presently

backgrounds may soon be operating together

placement of that component does not [constitute

interrelation between the bottle and the cage, it is

are encountered regularly in many contexts from

used IBCs that had been previously put onto the

bound by the same definition of infringement as

under the same provisions of the Unified Patent

infringement by making the product].”

unlikely that the focus of the invention could have

inkjet cartridges to car components and the draf-

market by Schütz. These “cross-bottled” IBCs were

provided by Article 25 of the Community Patent

Court Agreement. Giving the leading judgement,

been sufficiently shifted by clever claim drafting to

ting attorney must pay careful attention both to

then put back onto the market in competition with

Convention (CPC). The Bundesgerichtshof (BGH)

Lord Neuberger declined to remit the case in order

In this sense the Judges were swayed by the legiti-

the combination of bottle and cage. A claim to a

the law and to the intended business model when

those of Schütz.

had reviewed three earlier decisions and was of

to adduce further evidence as in Germany. Instead,

mate expectation of the purchaser that the bottle

method of repairing an IBC would certainly appear to

formulating claims.

cage. Nevertheless, the claim explicitly included the pallet, the plastic bottle and the outer cage.

22 EUROPEAN IP UPDATE MAY 2013

EUROPEAN IP UPDATE MAY 2013 23


Our 125th anniversary, a gOOd mOment tO cOntemplate the future

Lately, the future of innovation has been discussed at length in the media. Serious attention is paid to the significance of Intellectual Property. Some say protecting ideas, designs and trademarks interferes with innovation.

We believe otherwise. Daily practice tells us IP has a crucial role in the future of innovation. No company will invest in ideas that can be copied unpunished.

As one of the most prominent IP firms in Europe, we like to take the lead in these discussions. During our jubilee year, we would like to give advocates and opponents the opportunity to share their ideas about the future of protected innovations. To be even more prepared for it. And to continue to protect and fortify our clients’ innovations, ideas and trademarks for yet another 125 years. For more information, please visit our website nlo.nl


European ip update 11