http://ipkitten.blogspot.com/2025/02/never-too-late-if-you-missed-ipkat-last_17.html
Didn’t catch the latest in IP news last week? Don’t worry, here’s your chance to catch up on everything you might have missed!
Patents
Rose Hughes highlighted the EBA’s preliminary opinion in referral G1/24, which addresses the role of the description in claim interpretation. The EBA found Questions 1 and 2 admissible, but rejected Question 3. The case revolves around the interpretation of the term ‘gathered’ in Philip Morris’ patent, with the EBA’s opinion potentially influencing claim interpretation principles in both pre- and post-grant proceedings.
Katfriends Claudio Germinario (SIB) and Federico Caruso (SIB LEX) reviewed the CJEU’s December 2024 ruling on SPCs. The Court confirmed that a combination of active ingredients could be considered a new product under Article 3(c) and meet Article 3(a) requirements if it falls under the basic patent’s invention. However, it emphasized that the combination must have an effect beyond just the additive effects of its ingredients.
Trade Marks
Unicorn Studio Inc v Veronese [2024] EWHC 1098 (Ch), AGA Rangemaster Group v UK Innovations Group [2024] EWHC 1727 (IPEC), Shorts International Ltd v Google LLC [2024] EWHC 2738 (Ch), Laura Thurgood v Danielle Laight [2024] EWHC 2947 (IPEC), Extreme Networks Ltd v Extreme E Ltd [2024] EWCA Civ 1386, Thom Browne Inc v adidas AG [2024] EWHC 2990 (Ch), SkyKick UK Ltd and another v Sky Ltd [2024] UKSC 36, Alice Ltd v Photogram Ltd and others [2024] EWHC 3256 (IPEC) and Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5.
Anastasiia Kyrylenko reported on Advocate General (AG) Biondi’s opinion on the interplay between trade mark functionality and bad faith (C-17/24), clarifying that applying for a trade mark after a patent expires is not inherently bad faith. Bad faith must be assessed based on the applicant’s intentions at the time of filing.
Marcel Pemsel covered a German Patent Court ruling on the trade marks ‘GTI’ and ‘GTA’, where the court acknowledged aural similarity but rejected Volkswagen’s confusion claim, concluding that the descriptive nature of ‘GT’ lowers the likelihood of confusion, even with the long-standing use of ‘GTI’.
Copyright
Kat Friend Vanessa van Coppenhagen (Spoor & Fisher) explored the legal implications of using urban buildings in videos, especially with the rise of CGI and VFX in marketing.
Oliver Fairhurst explored the legal battle between Sony and the estates of Jimi Hendrix’s bandmates over performers’ rights, focusing on the claim of infringement involving the “GTI” mark, which was upheld by the English High Court. The case will proceed to trial, with potential implications for copyright ownership.
Katfriend Harry Houlden examined copyright in fictional universes through Shazam v Only Fools the Dining Experience and Others, questioning whether entire worlds like Only Fools and Horses could be protected. While the judge rejected a single copyright for the series, Houlden suggested that modern TV shows with cohesive narratives might qualify.
Oliver Fairhurst covers the Jukic v BBC (2025) case, where a LiP claimed her TV show treatment was copied for Glow Up. The court struck out her claims for lack of clarity and merit, issuing a civil restraint order to prevent future claims without permission.
Alessandro Cerri reported on a Dutch court ruling clarifying that an opt-out from the EU’s TDM exception must be machine-readable. The Court ruled in favor of HowardsHome, finding no copyright infringement, as the Claimants failed to properly reserve rights on their content for text and data mining.
Other topics
Eleonora Rosati reported Richard Stebbing’s (Withers LLP) opinion on the legal risks for businesses and individual users when using DeepSeek. He explained that the recent rise in popularity of DeepSeek’s R1 AI model poses legal concerns, particularly regarding data privacy and cybersecurity.
IPKat Book of the Year Awards 2024
Best Patent Book – Terrell on the Law of Patents, 20th edition, Sweet & Maxwell, Andrew Waugh KC, Douglas Campbell KC, Tim Austen, Tom Hinchliffe KC, Tom Mitcheson KC
Best Copyright Book – The Routledge Companion to Copyright and Creativity in the 21st Century, Routledge, eds. Michelle Bogre and Nancy Wolff
Best book on Trade Mark Law – Research Handbook on the History of Trademark Law, Edward Elgar, eds. Lionel Bently and Robert G. Bone
Best Book on Design Law – Designs Law and Practice, 3rd ed, LexisNexis Butterworths, Jeremy Drew and others
Best Foreign Language (Non English) Intellectual Property Book – Markengesetz, 14. Auflage, Carl Heymanns Verlag, Ströbele, Hacker and Thiering
Intellectual Property Law Book of the Year – Fairness In Intellectual Property Law, Edward Elgar, Annette Kur, Nari Lee, and Anna Tischner
IP events and opportunities
Rose Hughes informed readers about the following upcoming IP events:
1. CIPIL Spring Conference (29 March 2025)
2. LSE Law School Discussion (4 March 2025)
3. INTA New York Conference on Trade Secrets (19-20 March 2025)
4. Computer Technology Committee Spring Seminar (15 May 2025)
5. CIPA & APTMA Regional Meeting (12 March 2025)
6. reCreating Europe Spring School (15-20 May 2025)
Additionally, she highlighted an opportunity at the Intellectual Property Office, which is recruiting Associate Patent Examiners across various STEM fields with hybrid working options based in Newport, South Wales.
The IPKat Team
The IPKat Team welcomed Oliver Fairhurst, a partner at Lewis Silkin’s Intellectual Property team, as new GuestKat and Simone Lorenzi, an Italian Patent Attorney at Jacobacci & Partners, as new InternKat.
Asude Sena Moya will continue contributing as an InternKat for the following six months.
Söğüt Atilla, former InternKat, will now contribute to the Team as a GuestKat, whilst GuestKat Anastasiia Kyrylenko will continue as Book Review Editor.
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