The CJEU have recently issued a judgment in Case C-456/19, referred from the Swedish Patent and Market Court of Appeal. The case centred on whether a trade mark consisting of colour combinations, intended to be systematically affixed to goods used to deliver the services covered by an application, must depart significantly from the norms and customs of the commercial sector in order for the trade mark to have distinctive character. This is a test which has been applied in relation to 3D trade marks but we have not seen it applied to these type of colour combination marks before.
The Court of Justice of the European Union (“the CJEU”) has recently issued a judgement concerning the genuine use of Ferrari’s German TESTAROSSA trade mark registrations. This judgement was a positive outcome for Ferrari, and is particularly beneficial to owners of legacy and heritage brands.
On 9th July 2020, the Court of Justice of the European Union (CJEU) handed down their emphatic judgement concerning Supplementary Protection Certificates (SPCs) in Santen v INPI (C‑673/18). For those interested in the details and history of the case they can be found in my earlier blog, published in January, where I discussed the Advocate General’s preliminary and non-binding opinion. As far as this judgement is concerned the conclusion is clear: “a marketing authorisation (MA) cannot be considered to be the first MA … where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of an MA for a different therapeutic application” – emphasis added Put another way, the CJEU has decided that the literal wording of Articles 1(a), (b) and 3(d) of the SPC Regulation mean what they say. The previous CJEU decision in Neurim is consigned to the scrapheap.
In January 2020, the Advocate General (AG) provided his opinion in Santen v INPI relating to how Article 3(d) of the SPC regulation should be interpreted. This opinion from the AG is interesting and important for two reasons. Firstly, it is trying to clear up almost 10 years of confusion that was caused by the Neurim judgement, and secondly the recommendation provided is very clear.
Interpreting Article 3(a) of supplementary protection certificates (SPCs) regulation with respect to combination products
At the end of 2019, a decision from the Court of Appeal of England & Wales (EWCoA) in Teva vs Gilead gave us an idea of how national courts will interpret the CJEU’s latest guidance on the meaning of Article 3(a) – what is a “product … protected by a basic patent in force”?
Supplementary Protection Certificates (SPCs) are European sui generis rights which provide a form of patent term extension available in Europe for medicinal products or plant protection products. The period of effective patent protection for medicinal products and plant protection products can be significantly less than in other sectors because of the need to obtain a marketing authorisation (MA). Obtaining an MA can take a significant amount of time (typically around 12 years), which can be a large portion of the lifetime of a patent (20 years from its filing date). SPCs are national rights available in individual EU countries (and European Economic Area (EEA) countries: Switzerland and Norway) which are governed by EU regulations. They will also continue to be available in the UK following its exit from the EU. The SPC sphere is a fascinating and extremely active area of intellectual property law. There is a steady stream of decisions from the Court of Justice of the European Union (CJEU) attempting to clarify the SPC Regulations, and there are a number of issues outstanding. This brief guide attempts to give a sense of the current state of play.
CJEU answers UK reference arising from the UK High Court litigation between Sky and SkyKick on issues relating to bad faith and validity
In February 2018 we reported on the decision of Mr Justice Arnold in the UK High Court trade mark litigation involving various Sky companies (Sky plc, Sky International AG and Sky UK Limited – ‘Sky’) and SkyKick (SkyKick UK Limited and SkyKick Inc). On 29 January 2020 the Court of Justice of the EU (CJEU) delivered its judgement on the questions referred by the UK court. Details of the CJEU’s judgement and what it means in practice are set out below.
It may only be the opinion of the Advocate General but after almost a decade of fog surrounding Article 3(d) of the SPC Regulation this latest offering in Santen v INPI suggests that clarity may be about to prevail.In the past the decisions and opinions of the CJEU & Advocate General have often been criticised for their lack of clarity and applicability but this is not a criticism that can be levelled at Giovanni Pitruzzella. If the CJEU choose to follow his guidance then Neurim will be scrubbed from the record books and Article 3(d) will, once again, mean what is says.As a quick reminder, Article 3(d) of the SPC regulation states that a certificate shall be issued if:“the authorization [for the product] is the first authorization to place the product on the market as a medicinal product”The “medicinal product” and “product” are defined in Article 1 of the regulation and essentially relate to “any substance or composition presented as having curative or preventive properties with regard to human or animal diseases” and “the active ingredient or the composition of active ingredients in a drug” respectively.