The European Court of Justice (”ECJ”) ruled in Praktiker Bau- und Heimwerkermärkte (C 418/02) that a trade mark that is now in use by a company on its goods can be extended to cover the services provided by this company.

A DIY retailer Praktiker Märkte, filed for registration with the Deutsches Patent und Markenamt (the German Patent and Trade Mark Office) of the mark PRAKTIKER in respect of the slogan ‘retail trade in building, home improvement and gardening goods for the do-it-yourself sector.’ However the German Patent Office refused registration of this slogan on the grounds that the concept of ‘retail trade’ did not denote independent services having autonomous economic significance.

In Newman Ltd v Adlem (2005), the Court of Appeal held that there was a duty on the seller of a business not to undermine the goodwill attached to that business (if included in the sale) even after the non-competition covenants in the sale agreement had expired. Goodwill is an intangible asset valued according to the advantage or reputation a business has acquired.

In the case of Merz Pharma GmbH and Co KGaA v Allergan Inc [2006], a dispute arose as to the validity of a patent for the use of Botulinium toxins in a type of medical treatment.

Both the claimant and defendant companies were involved in the manufacture, marketing and development of pharmaceuticals. The defendant was the holder of a patent which concerned the use of ‘the neurotoxin component’ of Botulinium toxins in the treatment of pain caused by muscular activity and contracture. The Botulunium toxins were a compound of ‘the neurotoxin component’ and ‘neurotoxin associated proteins’.

The UK Patent Office conducted a consultation on one of the tests for patentability – which is whether an invention has an ‘Inventive Step’. The test is whether the invention is obvious to a person skilled in the art taking into account what prior art was available at the time when the patent application was filed.

The consultation looked at the wider significance of the ‘Inventive Step’ and whether there was any need for change. It also considered the possibilities of refining the ‘Inventive Step’ test under UK and European law.

The recent case of Wistbray Ltd v Creative Nature Ltd (2005) emphasises that the Court will look at the overall impression of a sign to determine whether it infringes a trade mark.

Section 10 of the Trade Marks Act 1994 provides, so far as is material: ‘(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because.(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark’.

A ground-breaking decision was delivered by the Court of Appeal in the cases of Aerotel Ltd v Telco Holdings Ltd (and others) [2006] and Macrossan’s Application [2006] on 27 October 2006. This important decision means that there is now a new method by which patent examiners will assess whether or not an invention is patentable. The decision is especially relevant to those wishing to patent ‘business methods’ or ‘computer programs’.

Frequently Asked Questions on Intellectual Property Protection

1. Are intellectual property assets?

Without a doubt, intellectual property (IP) is one of the most important assets that a company will own. IP can be licensed, bought, sold, hired or mortgaged like any other form of property. One of the main sources of IP is from the results of research and development work. In order for companies and individuals to maintain the value of their IP, they must ensure a sufficient level of protection and safeguard against infringing a third party’s IP, writes Dr Rosanna Cooper.

2. What are intellectual property rights (IPRs)?

In the recent judgment of Re Shopalotto.com (2005), the Comptroller refused a patent application for a computer programme that permitted a user to play the lottery on the grounds that it was excluded from patentability under the provisions of the Patents Act 1977.

Shopalotto.com applied for a patent of a computer apparatus configured to provide a lottery playable via the Internet. The apparatus provided a web server and further software conditioning the machine to receive, store, select and compare. This enabled the computer to operate in a new way—to permit a user to play the lottery. The application was rejected and Shopalotto.com appealed this decision.

The claimant in the case of LG Phillips Co Ltd v Tatung (UK) Ltd and Others [2006], held a UK patent for mounting a flat panel display device within a two-part housing, which could be incorporated into products such as laptops or free standing computer monitors. The patent was principally directed at LCD displays for laptops. The claimant brought proceedings against three defendants in the patent county court. It was alleged that the defendants had infringed the patent through the creation of a closed circuit television monitor. The defendants denied infringement, and actually counterclaimed for the revocation of the patent in question on the grounds of anticipation, obviousness and insufficiency.