Botti & Ferrari

Skype cannot register its trademark in Europe because it is likely to be confused with the one of the TV broadcasting giant Sky. This has been hold last May 5, 2015 by the General Court of the European Union (ECG) through three judgments (relating to cases T-423/12, T-183/13 and T-184/13). Considering the signs at issue similar, the ECG has uphold the arguments of the OHIM’s Board of Appeal, so that it has found that there is a risk of confusion between the trademarks SKYPE and SKY. However, the ECG has found irrelevant the secondary meaning occurred in connection to the use of the trademarks SKYPE, stating that “it is the recognition made by the relevant public of the earlier mark, and not the one made in connection of the mark applied for, which must be taken into account when determining whether there is a likelihood of confusion between the two trademarks”.

Last Monday the U.S. Supreme Court definitely bars Bristol-Myers Squibb Co’s way to restore patent protection for its Baraclude treatment for hepatitis B. The high court declined to hear Bristol-Myers’ challenge to an appeals court ruling in favor of rival Teva Pharmaceutical Industries Ltd, which had successfully challenged the patent. In a June 2014 ruling, the U.S. Court of Appeals for the Federal Circuit upheld the federal Delaware court’s conclusion that the patent was invalid. The case is Bristol-Myers v. Teva, U.S. Supreme Court, No. 14-886. Teva announced last September that it was launching its generic version of the drug

Spain sought the annulment of two regulations implementing enhanced cooperation in the area of the creation of unitary patent protection, i.e. Case C146/13 and C147/13. In the first case, the Court rejected Spain’s argument by pointing out that “the regulation is in no way intended to delimit the conditions for granting EP patents, and that it does not incorporate the procedure for granting EP patents laid down by the EPC into EU law”. As far as the case C147/13 is concerned, the Court acknowledged that the regulation differentiates between the official languages of the EU. However, it emphasized that “the regulation has a legitimate objective, i.e. the creation of a uniform and simple translation regime, so as to facilitate access to patent protection, particularly for small and medium sized enterprises”.

Yesterday, April 26, 2015, the World Intellectual Property Organization (WIPO), celebrated the Intellectual Property World Day.The Intellectual Property World Day has been instituted in 2000 with the aim of encouraging creative activity and to promote and protect Intellectual Property in the world. This edition was dedicated to music: the chosen title “Get Up, Stand Up, For Music” is, in fact, a partial quote from Bob Marley and intends to celebrate the creativity from which benefits all mankind. In this regard, the General Director of WIPO, Mr. Francis Gurry, said in his inaugural message that “music is part of an extraordinary revolution that is taking place around us, a revolution that is fundamentally changing the way creative works are produced, distributed and consumed”.

Piaggio has sued its competitors Peugeot and Yamaha, for the infringement of a number of European patents granted in his name. In particular, the matter of the dispute is the Piaggio MP3 scooter, first model of scooter with three wheels and an innovative tilting structure, that the Italian company had carefully protected with several patents. Regardless of the risk, Peugeot and Yamaha have allegedly reproduced this feature on their respective models Metropolis 400 and Tricity 125. Therefore, Piaggio has requested the Court of Milan to order the two companies to compensate the damages for unfair competition and to proceed to the withdrawal from the market of the above mentioned products.

Within the Legislative Decree No 3/2005 entitled “Investment Compact”, which came into force from January 25 2015, it has been instituted the category of “innovative SMEs” to which are extended some subsidies normally granted for innovative start-ups. Among the conditions of access to the register of innovative SMEs, a Company must be the owner or licensee of at least one IP right (patent, trademark, design-model) referring to an invention in the field of industry or biotechnology, a topography of semiconductor product or a new plant variety, or ownership rights relating to an original computer program registered to the Public Register for special computer programs, provided that such rights are directly relating to the business activity of the Company. Moreover, among the conditions of access to the registry, the Company must present the list of its IP rights. referring to the activity of the Company itself. In addition, the volume of expenditures in research, development and innovation carried out by SMEs must be equal to or more than 3 percent of the greater magnitude of cost and total value of production of innovative SMEs, and, among the items of expenditure are included those Legal for the registration and protection of intellectual property, terms and licenses.

According to Article 53(b) of the European Patent Convention (EPC), plant varieties as well as essentially biological processes for the production of plants (processes which do not introduce or modify a trait into the genome of the plants) are excluded from patentability. Few days ago, in relation to the widely known “Broccoli II” and “Tomato II” cases, the Enlarged Board of Appeal (EBA) of the EPO has clarified that Article 53(b) EPC “does not have a negative effect on the allowability of a product claim directed to plants or plant material”. Thus, a product or a product-by-process is different subject-matter from the essentially biological process through which is obtained and it is patentable, even if the product can only be obtained by a process excluded from patentability.

The EPO’s Economic and Scientific Advisory Board (ESAB) has issued a statement on the possible introduction of a grace period in Europe. Even though ESAB members were divided amongst regarding the desirability of the introduction of a grace period in Europe, however they did agree that Europe should consider introducing a grace period only if two vital conditions are met: 1) the grace period must be a “safety-net” grace period, and 2) the grace period must be internationally harmonized in the key global patent systems. In particular, a “safety-net” means that the hypothetical grace period should be used only when absolutely necessary and any strategic use of it, which ran counter to the objectives of the patent system, should be discouraged. Ideally, if a grace period were adopted, it would be so that users did not “use” it, but occasionally “benefitted” from it, for instance, where accidental disclosure occurred.

In decision G 3/14, the Enlarged Board of Appeal of the European Patent Office has clarified the circumstances in which claims clarity might be considered during opposition proceedings and in particular for what types of amendments lack of clarity might be invoked. For example, lack of clarity cannot be objected in case of incorporation of a dependent claim into the independent claim, both granted. On the contrary, amendments based on the description always require special attention. Substantially, the EBA has highlighted, with this decision, the importance of the clarity since the examination procedure, asking to the Examiners for a more strict approach against unclear dependent claims.

The president of the EPO (Benoit Battistelli), has recently submitted proposals for the level of renewal fees for the future European Patent with Unitary Effect to the responsible working group. The proposals are for discussion in a meeting scheduled for end of March. Other meetings may be further planned, in order to finalize the amount of the annuities and the distribution key by end of June 2015.