Ova and Oberbank on way to Luxembourg: your chance to comment

Some CJEU judges have gone
into hiding till the flow of IP
cases abates ...

Here are two more cases in which questions arising from the European Union's increasingly complex IP law are off on their way to Luxembourg to be answered by the increasingly beleaguered members of the Court of Justice of the European Union (CJEU).   In each case the UK's Intellectual Property Office (IPO) invites comments which will assist the UK government in deciding whether to make representations before that court.  The first case should be familiar to readers of this weblog:

 High Court Case - [2013] EWHC 807 (Ch ) - International Stem Cell Corporation "ISCC"and Comptroller General of Patents

Following a judgment in the High Court in the case International Stem Cell Corporation (ISCC) and Comptroller General of Patents [2013] EWHC 807 (Ch), the following question has been referred to the CJEU: 

Are unfertilised human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilised ova, contain only pluripotent cells and are incapable of developing into human beings, included in the term "human embryos" in Article 6(2)(c) of Directive 98/44/EC on the legal protection of biotechnological inventions? 

Case summary: 

The case concerns an appeal in the UK High Court [the appeal may have UK-wide consequences, but there are some good folk who labour under the apprehension that this court is for England and Wales only] concerning two patent applications in the name of ISCC both relating to human stem cells. The patent applications were refused by the Intellectual Property Office on the grounds that the inventions disclosed in the patent applications were excluded from patentability under paragraph 3(d) of Schedule A2 to the Patents Act 1977. 

The case questions what is meant by the term "human embryos" in Article 6(2)(c) of Directive 98/44/EC on the Legal Protection of Biotechnological Inventions. In particular, what was meant by the CJEU in Case 34/10 Oliver Brüstle v Greenpeace eV [2012] 1 CMLR 41 [discussed here by the IPKat] by the expression "capable of commencing the process of development of a human being"? 

PLEASE NOTE THAT THE INTELLECTUAL PROPERTY OFFICE HAS NOT YET BEEN NOTIFIED OF AN OFFICIAL REQUEST FOR A PRELIMINARY RULING BY THE CJEU ON THIS QUESTION [says Merpel, the IPO may not have been notified of an official request, but it ought to know about this reference anyway.  For one thing, the IPKat weblog posted this item on it as long ago as 19 April, which is two months ago.  For another thing, this is an appeal against an IPO decision and the IPO is a party to the reference] 

We are publishing notice of the referral made from the UK High Court to give stakeholders more time to consider the issues raised and the need for filing comments at the point that official notification is received. 

If you would like to comment on this case please email policy@ipo.gov.uk.  At this point there is no deadline for comments as we have not received notification of this case from the Court of Justice.[Hoorah, chorus the Kats, we'd like to see this more often instead of the silly and unreasonable deadlines for making comments which have too often been foisted on the IP community 

If you are aware of any references to the ECJ that are not currently included on our website, you are also welcome to send us your views.  If you choose to do this, please include clear information about the case to help us to identify it.[Hoorah again!]

The second notification relates to two apparently related trade mark cases from Germany:

CJEU cases: C-217/13 & C-218/13: OBERBANK AND OTHERS (trade marks) 

 We have received notification of two joined cases referred to the Court of Justice:  C-217/13 and C-218/13 [by the Bundespatentgericht].  The request for a preliminary ruling in these joined cases concern the interpretation of Directive 2008/95/EC on the approximation of laws regarding the registration of a contourless colour mark (red) as a collective mark for a number of goods and services in the banking/credit industries. 

 These cases and the questions referred to the court can be viewed on our website at:
 http://www.ipo.gov.uk/pro-policy/policy-information/ecj/ecj-2013.htm

1.Does Article 3(1) and (3) of the directive preclude an interpretation of national law according to which, for an abstract colour mark (in this case: red HKS 13) which is claimed for services in the financial affairs sector, a consumer survey must indicate an adjusted degree of association of at least 70% in order to form a basis for the assumption that the trade mark has acquired a distinctive character following the use which has been made of it? [A cunningly phrased question: the court is not asking the CJEU to quantify with precision the degree of recognition that accords distinctiveness through use but which asks it to give the okay to an application of national law that has that effect]

2.Is the first sentence of Article 3(3) of the directive to be interpreted to the effect that the time at which the application for the trade mark was filed - and not the time at which it was registered - is also relevant in the case where the trade mark proprietor claims, in his defence against an application for a declaration invalidating the trade mark, that the trade mark acquired a distinctive character, following the use made of it, in any event more than three years after the application, but prior to registration?

3.In the event that, under the above-mentioned conditions, the time at which the application was filed is also relevant:

Is the trade mark to be declared invalid if it is not clarified, and can no longer be clarified, whether it had acquired a distinctive character, following the use made of it, at the time when the application was filed? Or does the declaration of invalidity require the applicant seeking that declaration to prove that the trade mark had not acquired a distinctive character, following the use made of it, at the time when the application was filed?

 If you would like to comment on these cases please email policy@ipo.gov.uk by 24 June 2013. ...  [that's just 11 days, starting from now!]