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Intellectual Property Newsletter – Autumn 2012

Welcome to the Autumn IP update from the Clarke Willmott IP team.

In this update we provide a brief overview of some of the key developments in the IP field over the last quarter.

If there are any issues you wish to discuss further, please contact Roy Crozier.

Trade Marks

Trade mark owners be aware: You may lose your Community trade mark rights by only using the mark in one member state of the EU

Many trade mark owners only use their Community trade marks in one member state of the EU and this may expose the relevant trade marks to an attack by a third party for non-use (if the trade mark has been registered for more than five years). If the non-use attack is successful, it will be impossible to enforce the relevant trade mark against third parties.

An Advocate-General opinion has highlighted that if a Community trade mark is used in one country only, there is a risk that it may not amount to use “within the Community”. Consequently, the relevant mark could be attacked for non-use. Therefore, brand owners should review their trade mark portfolio every five years and where relevant re-file new Community trade mark applications.

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Another blow to parallel importers

It still comes as a surprise to some brand owners that they can prevent third parties from placing on the market in the European Economic Area (“EEA”) their own branded products which were originally put on the market outside the EEA. In other words, if a brand owner places its products on the market in the US it can prevent third parties from importing and selling those products in the EEA without its consent.

The UK Supreme Court (formally the House of Lords) recently considered this issue in the case of Oracle America, Inc. v M-Tech Data Limited.

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How much protection do you have for your trade marks?

The Court of Justice of the European Union (“CJEU”) has considered recently the scope of class headings in trade mark specifications. This decision has a significant impact on all trade mark proprietors who have filed trade marks using class headings. We would encourage all readers to review their trade mark portfolio in light of this case as many proprietors may not have the protection they require or indeed believe that they have.

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Designs

Welcome news for car manufacturers: the “spare part” defence

The High Court considered the scope of the “spare part” defence for Community registered design infringement. This decision has ramifications for car manufacturers as it clarifies when a design right in a spare part can be enforced to prevent a third party from producing and selling a look-a-like product.

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Patents

A step closer: The Unitary EU Patent

The long awaited unitary EU patent regime has come a step closer, with the European Council deciding on the location of the Unified European Patent Court and its two divisional centres. There are still political hurdles which need to be overcome before the regime can be ratified and its implementation be scheduled.

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