Court backs Broad over Berkeley in CRISPR patent battle

On 10 September 2018, the United States Court of Appeals for the Federal Circuit upheld a judgment from interference proceedings at the US Patent and Trademark Office (USPTO) that found that the Broad Institute’s use of CRISPR/Cas9 gene editing in eukaryotic cells was patentable independently from UC Berkeley’s use in cell-free systems.

The rulings were made under the old US ‘first-to-invent’ system, which applies to all patent applications filed before 16 March 2013, under which interference proceedings aim to grant the patent to the applicant with the earliest date of invention, regardless of the date of filing. Berkeley had sought to have the Broad Institute’s patents cancelled, Berkeley arguing that the inventors of their application were the first to invent CRISPR/Cas9 gene editing. However, the ruling of no interference means that the Broad Institute may retain their US patents and Berkeley’s pending US patent application will continue to be examined by the USPTO.

It is unclear whether the USPTO will now approve Berkeley’s patent application in its entirety, a situation further complicated by another CRISPR patent from Vilnius University that has in the meantime been granted.
The ruling is great news for Editas medicine, which develops therapies to treat genetic diseases in humans and which was co-founded by Broad scientist Feng Zhang. The Institute has also made non-exclusive licensing deals for CRISPR tools with several other agricultural and bioscience companies.

Broad has called on all institutions to “work together to ensure wide, open access to this transformative technology”.

Elise Cutforth

UKIPO publishes Crime and Enforcement Report

The UKIPO has just issued its annual IP Crime and Enforcement Report, and it makes interesting reading for any brand owner, but particularly those who sell products which are attractive to counterfeiters.

Worryingly, Police Scotland are quoted in the report as saying that ‘The most problematic aspect in taking effective enforcement action against those involved in the commissioning of IP offences is dealing with consumer apathy’. Consumers are clearly assuming that any product they purchase in the UK is safe and will function as intended, even if it is counterfeit.  While on the one hand it is comforting to know that we live in a society where consumers complacently assume any product they buy is safe, this is a hugely risky assumption, as a review of the report will reveal. Counterfeit MAC lipsticks were found to contain 300 times the legal limit of lead, for example, which makes the £10 (or thereabouts) saving associated with buying the counterfeit product look very poor value for money.

This firm handles anti-counterfeiting work for a number of companies, across the globe. Do get in touch if you have any concerns and would like to talk further about how we can help you in this area.

Authored by Cathy Ayers

Dr Adrian Bradley to speak at CIPA webinar on Open Innovation

Cleveland Scott York partner, Dr Adrian Bradley, will be speaking as part of a webinar on Open Innovation organised by the Chartered Institute of Patent Attorneys (CIPA) on Tuesday 18 September 2018.  Also presenting is Bernie Graves of US law firm Baker Donelson.

Open innovation involves combining internal and external ideas as well as internal and external routes to market to advance the development of new technologies. The CPD webinar will examine how open innovation projects can be structured and executed, including a consideration of the pitfalls.

Further details, including information about how to book, are available here.

St Albans City of Expertise – The cost of growing a business

Champagne corks may be popping in the knowledge that, in the recent City of Expertise – ‘Barriers to Growth’ survey, over 80% of the businesses in St Albans and surrounding area are anticipating growth within the next 2 years. 60% are expecting up to or over 10% growth in productivity. But growth comes at a price – literally!

As members of City of Expertise, we’d encourage you to read the report.

Read more on the City of Expertise website here.

Listen to the inaugural City of Expertise podcast!

[:en]As members of St Albans City of Expertise, which promotes businesses in and around St Albans, we are pleased to say that the first episode of the City of Expertise podcast in conjunction with Radio Verulamium is now available to listen to.

This episode hears from Silvia Vitello of Kingston Smith LLP discussing the City of Expertise commissioned Barriers to Growth Business Survey 2018.

Listen to the podcast here.[:]

EU protection of geographical indications – does GLEN BUCHENBACH imply Scotch Whisky?

The CJEU has recently provided guidance on the extent of protection granted to geographical indications (‘GI’) under EU law.

The Scotch Whisky Association (‘SWA’) brought a case in the German courts against an online distributor of a whisky produced in Germany. SWA claimed that use of ‘Glen Buchenbach’ on the spirit in question infringed the GI for “Scotch Whisky” – a term reserved in the EU for use solely on whisky produced in Scotland. In particular, SWA objected to the use of the word “Glen”, a Gaelic term for ‘deep valley’, on the basis that use of this word implied that the product was of Scottish origin. SWA argued that the protection of a GI extends to any reference that alludes to the geographical origin of the indication (here Scotland) even though the label of the Glen Buchenbach bottle also clearly stated that the whisky was produced in the Waldhorn Distillery, Germany.

In its reference to the CJEU, the German Court asked a number of questions relating to the extent of protection granted to geographical indications, and in particular the interpretation of the provisions of Article 16 of Regulation 110/2008.  The German Court requested clarification on whether ‘indirect use’ or ‘evocation’ of a protected GI could be established in situations where the use complained of was neither identical nor similar to the registered GI. In addition, they asked for an indication of the factors to be taken into account when deciding whether a protected GI is infringed.

Under the first ground, the CJEU held that indirect commercial use must be in a form that is either identical, or phonetically and visually similar, to the registered GI – it is not sufficient for the complained of terms to imply an association with a registered GI. By this reasoning, use of ‘Glen’ is not sufficiently close to constitute indirect use of “Scotch Whisky”.

In instances where holders of protected GIs cannot rely on “direct” or “indirect” use, however, the Regulation also provides an additional ground of protection against “evocation” of the GI as well as false and misleading indications. Under this ground, and for the purposes of establishing ‘evocation’, the Court held that whilst there is no requirement of similarity, the visual and phonetic closeness of the two terms may be a relevant factor. In addition, the Court confirmed the importance of establishing both a direct link between the two terms and a level of conceptual proximity. In this case the question to be asked was whether use of  ‘Glen’ or ‘Glen Buchenbach’ triggers the average consumer to think of “Scotch Whisky”.

Finally, the Court was asked to consider the scope of the third ground: a ‘false or misleading indication’. Referring back to the intention of the EU legislature in the creation of this provision, the Court played down the importance of the particular context in which the disputed term is used. Instead, it was found to be immaterial that the bottle prominently displayed elements in addition to Glen (including the name of the distillery which produced the drink).

Whilst holders of registered GIs will be pleased to note the Court’s comments relating to the irrelevance of the context of use, the judgment does give a relatively narrow construction of “evocation” requiring a direct link and conceptual proximity, which is likely to limit the scope of protection afforded to GIs. Exactly how the test for infringement will be applied to these specific facts remains undecided – the case has now been referred back to the German National Court for its decision on the facts.

Authored by Danielle Jeeves

Results of latest chocolate wars skirmish

Following our report on the last phase of this battle, the Court of Justice of the European Union issued its judgment (and a further press release) on this dispute on Wednesday, 25 July.

As is pretty common in cases which move beyond the EUIPO to the European Courts of Justice, this case will now be pushed down again to the level of the EUIPO, for them to perform some further analysis, as the Court isn’t happy with the manner in which the case was assessed by the EUIPO previously. Specifically, the Court re-emphasised that a trade mark proprietor has to prove that its mark is either inherently distinctive, or has acquired distinctiveness, throughout the EU. The Court here held that the EUIPO had not made findings on these questions for the EU as a whole. It therefore remitted the case back to the EUIPO in order that they might reassess Nestlé’s evidence to see if it does fulfil that EU-wide criteria.

At this point, it looks like all the parties are winners and losers to some degree, but the question of whether the shape is validly registered as an EU trade mark will most likely not be answered finally for many more years. The reason for this is that we can be sure whichever party comes off worst when the EUIPO reconsiders the case will enter a further appeal.

A trade mark registration covering a shape, particularly a pretty functional shape, such as the four bar Kit Kat, is a very significant monopoly and it is therefore not surprising that the quality of the evidence filed in these disputes is critical. Its importance has been highlighted again here.

By Cathy Ayers

UK Implementation of the EU Trade Mark Directive

In February 2018, the UKIPO issued a consultation paper on the implementation of the EU Trade Mark Directive 2015 (the “Directive”).

The Directive is intended to update and further harmonise the national trade mark laws of EU Member States.  It will also bring those national trade mark laws into line with the recent changes to the EUTM following the coming into force of the latest EU Trade Mark Regulation.

The Government’s response to the consultation has now been published alongside a draft Statutory Instrument that must implement the Directive into UK law by 14 January 2019.

The most significant proposed changes are summarised below:

  • The requirement for trade marks to be capable of “graphical representation” is to be removed – though the subject matter of the mark must still be clearly and precisely defined.  This opens the door for businesses to file applications for non-traditional trade marks such as smells, video and audio-visual signs.
  • The claimant in infringement proceedings is to be required to demonstrate use of its earlier trade mark registration before it can be enforced.  This effectively introduces a new defence to trade mark infringement and a defendant would not have to commence a separate non-use action or counterclaim.
  • It will be possible for customs authorities to detain potentially counterfeit goods originating outside the customs territory of the EU and which are passing through the UK without the need for proof that such goods were to be offered for sale in the UK.
  • Trade mark owners will be entitled to prevent infringing preparatory acts such as applying an infringing sign to packaging, labels or tags.  The requirement that the defendant knowingly applies the sign to packaging without the consent of the trade mark owner is to be removed.

The Government will now finalise the draft Statutory Instrument and put this before Parliament over the summer.

Business guidance on all of the proposed changes will be issued before the implementation date.

Authored by Andy Clemson

Intellectual property law specialists open Hatfield office

A firm of intellectual property law specialists has relocated its Hertfordshire office to Hatfield.

Cleveland Scott York has made the move from St Albans to state-of-the-art premises at Helios Court on Hatfield Business Park.

The firm’s Chartered Patent Attorneys, Chartered Trade Mark Attorneys and other professionals opened the doors to their new offices on Monday 2 July 2018.

The team takes pride in securing cost-effective protection for clients’ intellectual property, enabling them to invest in their brands and in research and development without fear that competitors will reap the rewards of their efforts.

In the run-up to the move, Cleveland Scott York has been active in the local community, joining the Chamber of Commerce, Hemel Hempstead Business Ambassadors and sponsoring the recent Hatfield Music Festival.

Andrew Mackenzie, a Partner at the firm’s Hertfordshire office, said: “We are delighted to have opened our new offices at Helios Court, from where we will continue to advise businesses of all sizes on how best to protect and commercialise their ideas.”

In addition to its Hertfordshire office, Cleveland Scott York also has offices in the City of London, the Thames Valley and Brussels, all of which are unaffected by the move.

A sobering result for Woof and Brew as its application to trade mark Pawsecco is refused.

In a recent decision by the UK Intellectual Property Office, a provider of pet drinks had their application for a trade mark refused. Woof and Brew’s release of PAWSECCO in early 2017 caught the attention of many pet-owners and drinks-lovers, including Consorzio di Tutela della Denominazione di Origine Controlla Prosecco (‘Consorzio’).

Consorzio is the organisation responsible for the protection and promotion of the Protected Designation of Origin (PDO) for Prosecco, an increasingly popular sparkling wine. The PDO ensures that only products using a particular type of grape from a specified region in Italy may use the name Prosecco.

The application for the registration of trade mark PAWSECCO was consequently objected to by Consorzio, who opposed the application with reference to six sections of the Trade Mark Act 1994. Five of the six objections fell flat, with only the use of Section 3(4) proving to be fruitful for Consorzio. This section provides for the refusal of a trade mark if its use in the UK would be preventable by EU Law. Article 103(b) of Regulation 1308/2013 of the European Parliament and Council (relating to the regulation of agricultural products generally) was relied on by Consorzio who aimed to demonstrate that Pawsecco was “evocative” of Prosecco PDO.

Whilst it was considered highly unlikely that Pawsecco and Prosecco would be confused, this in itself was insufficient to prevent a finding of evocation. Case law from the CJEU was cited by Consorzio to further this point (Gorgonzola (Case C-87/97)).

Paragraph 97 of the recital to Regulation 1308/2013 states that “registered designations of origin…should be protected against uses which take advantage of the reputation enjoyed by complying products”. Mr Morris, the Senior Hearing Officer in this application, agreed with Consorzio that the PAWSECCO mark relies on the evocation of Prosecco, finding that the whole marketing strategy was actually based on their consumers making such link. This ‘marketing gimmick’ was considered to be taking advantage of the PDO’s reputation, and therefore unacceptable in the name of fair competition.

Authored by Philippa de la Fuente.