BRUSSELS IP SUMMIT 2004
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PAN-EUROPEAN MOCK TRIAL

A cross-border euro-injunction including patent, trademark and copyrights issues


Judges' Panel Scenario and Questions


Morag Macdonald

Presentation of the case by:
  • Morag Macdonald (United-Kingdom)
  • Isabelle Leroux (France)
  • Massimiliano Mostardini (Italy)
Partners IP Practice — Bird & Bird

The Gadget Company is a new entrant into the European market with a new exciting personal electronic handheld device. Its sales outstripped all expectations and has just run off the shelves in the first few months after launch. The device is now expected to be the "must have" product for the Alpine ski slopes in the New Year which no fashionable skier will be seen without.

The Gadget Company sells the product under the trade mark NOPEACE and it has a distinctive new design. They have applied to register the NOPEACE mark as a Community Trade Mark but that is still at the application stage. They have also applied to register the design of the device under the Community Design regulation but have not yet obtained a registration for this either.

The Gadget Company has obtained a patent where Claim 1 of the patent is to

"A handheld electronic device characterised in that it comprises a circuit board incorporating an oodjit".

An oodjit is an electronic component known to electronic engineers but it has never been used before in a handheld device. The Gadget Company's patent is under opposition at the European Patent Office. The opposition was filed by the Metoo Company just over a month ago.

The Darkside Company has a website offering personal organisers and about two months ago a new product started to be advertised on the website under the mark NOPACE.

About seven weeks ago the Gadget Company were alerted to the new NOPACE product because of a telephone call to their helpline asking for help with setting up the device for accessing the Internet. The Gadget Company's engineer who answered the call rapidly became aware that the device that the customer calling him had a device with a completely different menu system from the one for the NOPEACE device. Being a very bright and ambitious engineer he obtained details from the customer over the phone of what his device looked like and of the NOPACE mark being used on it and passed these on immediately to the Gadget Company's legal department.

The Gadget Company's legal department then searched the Internet and found the Darkside Company's website. General Counsel at the Gadget Company then ordered a NOPACE organiser from the Darkside Company's website using his wife's computer at home and passed it on to his technical department as soon as it arrived about six weeks ago. The technical department analysed the NOPACE device and produced a report which was reviewed by the Board of the Gadget Company last week.

According to the technical department's report, whilst the organisers do not have full mobile telephony facilities they, not surprisingly, contain a circuit board and that board has an oodjit on it. Therefore, the NOPACE product clearly infringes the Gadget Company's patent. However, there are some real questions over the validity of this patent particularly relating to whether it covers patentable subject matter. Also the technical department's report says that the two devices look the same apart from the arrangement of some of the control buttons.

The Gadget Company is a US company with a subsidiary in France where it has its major European manufacturing and marketing facility. It has done some investigations into the Darkside Company and as far as it can tell it is a Hong Kong based company with manufacturing in mainland China and a European distribution facility in the Netherlands. The Darkside Company also appears to have a subsidiary that does a lot of its European marketing and handles the orders from all over Europe and this subsidiary is a German company based in Essen.

The Board of the Gadget Company are furious about the NOPACE product. The major markets in Europe for the NOPEACE product are, unsurprisingly, Germany, France, Italy and the UK. However, they also have unusually good market penetration in Spain, the Netherlands, Poland and the Czech Republic and are eager to obtain an injunction to stop sales of the NOPACE product at least in those countries. Since the NOPEACE product is relatively new to the market itself, it is hard to tell precisely what impact sales to the NOPACE device are having on sales of the NOPEACE one. However, the Board of the Gadget Company are convinced that it must be having a significant effect and that this can only get worse.

As far as the Board of the Gadget Company is concerned at the moment money is no object and they want the NOPACE product stopped at all cost. However, General Counsel of the Gadget Company is aware that this is a view being taken in the heat of the moment and that he has to be careful to deal with this matter as expeditiously but also as cost efficiently as possible. He certainly has nothing in his legal department budget to allow for major litigation n Europe. Although he had warned the Board in advance of the launch of the NOPEACE product that there was a risk that someone might try to infringe the product and that they therefore ought to budget for dealing with this, the Board had not approved such a budget since they wanted to concentrate their spending on advertising and marketing the product and in particular on a major European-wide TV advertising campaign.

In relation to the patent infringement

  1. Will the Court grant an interim injunction? Has there been too much delay in bringing such an application?
  2. If the Court will grant an interim injunction, will it do so for countries other than its own?

In relation to the NOPEACE/NOPACE trademark issue

  1. Will the Court grant interim relief. Has there been too much delay in bringing such an application?
  2. If the Court will grant an interim injunction, will it do so for countries other than its own?
  3. What sort of evidence would the Court want to see in relation to this?

In relation to the design issue

  1. Will the Court take jurisdiction as a Community Design Court?
  2. Will the Court grant interim relief under the Community design right regulation?
  3. If the Court of a civil law Court grants interim relief by way of penalties how should the Gadget Company seek to enforce that injunction in the UK Court?

Morag Macdonald
November 15th, 2004

 


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