IP Report 6 - Q2 2018

Inteo is a Belgian law firm focused on intellectual property and related practice areas. This newsletter reports on noteworthy developments and court decisions relevant to intellectual property and technology law in Belgium and the EU.

Patents – pemetrexed – doctrine of equivalents – decisions in other jurisdictions – In a judgment issued on 15 June 2018, the President of the Brussels Commercial Court denied Eli Lilly’s claim for an injunction to prevent Fresenius Kabi from marketing a generic pemetrexed pharmaceutical product. Pemetrexed is the active ingredient of Eli Lilly’s chemotherapy product Alimta.

Eli Lilly relied on a European patent with claims for the use of pemetrexed disodium in combination with vitamin B12 (and, optionally, folic acid) in a medicinal product to inhibit tumour growth. Fresenius Kabi’s product does not comprise pemetrexed disodium, but a different pemetrexed compound (pemetrexed diacid in combination with thromethamine). Lilly inter alia argued infringement under the doctrine of equivalents because pemetrexed diacid performs essentially the same function, in essentially the same way, with essentially the same technical result. The gist of Eli Lilly's infringement case was that Fresenius Kabi’s product embodies the technical teaching of the patent, i.e. reducing the toxic effects of pemetrexed by administering it with vitamin B12.

The Brussels court dismissed the action. The Court notes that Fresenius Kabi’s (later) patent for its pemetrexed diacid product alleges to solve a problem of chemical instability of pemetrexed salt forms (including pemetrexed disodium). Eli Lilly submitted that that effect was obvious. The Court considers that, if this is true, Eli Lilly should not have limited its claims to pemetrexed disodium during the prosecution of its own patent. On that limitation, the Court was not convinced by Eli Lilly’s argument that the claims were limited to overcome an added subject matter objection, rather than one of novelty or obviousness over the prior art. The Court considers that reclaiming subject matter that was not pursued during prosecution under the doctrine of equivalents would run counter to legal certainty. 

Eli Lilly has enjoyed considerable success with its action under the doctrine of equivalents in other jurisdictions, including Germany, the United Kingdom, the Netherlands and Switzerland. The Belgian first instance action now went the other way. It is not uncommon that the outcome of infringement decisions differs across EPC jurisdictions and determining the scope of protection of the patent at issue in this case is by no means a straightforward exercise. Regardless of the result, however, it is disappointing that the Court’s final decision does not address or even mention decisions in other jurisdictions, including the UK Supreme Court’s landmark judgment of 12 July 2017 ([2017] UKSC 48). Although those decisions are not binding to the Belgian infringement court, their omission altogether is hard to reconcile with the interim judgment of 15 February 2018. In that order, the Court re-opened proceedings precisely to allow Eli Lilly and Fresenius Kabi to inform and update the Court on “the state of play in other jurisdictions”. It seems likely that Eli Lilly will appeal, if it has not already. It will then be up to the Brussels Court of Appeal to consider the law of infringement by equivalence in Belgium.

Trade marks – red soles and substantial value –  On 12 June 2018, the Grand Chamber of the Court of Justice issued a hotly anticipated judgment in case C-163/16 on a request for a preliminary ruling by the District Court of The Hague (The Netherlands). In infringement proceedings, Dutch footwear retailer Van Haren argued that Louboutin’s red sole trade mark is invalid because it consists exclusively of a shape that gives substantial value to the products (Article 3.1, e) of Directive 2008/95).

In just 9 paragraphs, the Court holds that the substantial value restriction under the old Trade Mark Directive does not apply to the red sole mark. A colour, even if it is only claimed for a specific position on the product, is not a shape. In a judgment issued on 18 November 2014, the Brussels Court of Appeal rejected Belgian retailer Van Dalen's invalidity defence against the red sole mark on the same grounds. The EU Court’s reasoning is straightforward. However, the more interesting question is whether the colour can be qualified as ‘another characteristic’ that gives the product substantial value because Article 4.1, e), iii) of the new Directive 2015/2436 broadens the scope of the substantial value restriction from shapes to ‘shapes or another characteristic’. Although the Court of Justice was bound by the terms of the referral, it would have been helpful if it had included an obiter dictum on the new provision.

Patents – saisie-contrefaçon – indications of infringement and decisions in other jurisdictions – On 24 April 2018, the Brussels Court of Appeal upheld a third party opposition action against a saisie-contrefaçon, an ex parte procedure to obtain evidence of intellectual property infringement in Belgium. B. Braun Melsungen (BBM) sought and obtained a saisie at the premises of Becton Dickinson on the basis of a European patent claiming a tip guard for hypodermic needles.

One of the statutory requirements to obtain a saisie is that there are "indications of infringement or of a threat of infringement”. This is generally considered a low threshold, because the purpose of the procedure is to collect and secure evidence. However, the applicant cannot rely on the evidence obtained by the saisie in third party opposition proceedings against the ex parte decision to award the measure. In that context, the court’s assessment is limited to the evidence the applicant provided at the time of the request.

In BBM v. Becton, BBM obtained a saisie for two products: the old and the new version of  Becton catheters marketed under the name ‘Venflon Pro Safety’. As indications of infringement for the new version, BBM relied on decisions on the European patent in Germany, Austria and an interim judgment by the President of the Brussels Commercial Court. BBM submitted that all had imposed either a permanent or an interim injunction. According to the Court of Appeal, these decisions did not justify taking evidence in Belgium.
 
In the German proceedings, it had been announced at trial that Becton’s appeal against the permanent injunction would be upheld because the new version does not infringe. BBM had not disclosed this in its ex parte request. The Austrian preliminary injunction was held to relate to the old version of the catheter, with Becton arguing that the new version does not infringe. The same was true for the interim decision issued by the Brussels court. The Court of Appeal concludes that BBM had not met the threshold of indications of infringement for the new version of Venflon Pro Safety.
 
The Court of Appeal one-upped by deciding that BBM had not provided sufficient evidence for the old version either. That decision is remarkable because the President of the Commercial Court had issued a preliminary injunction to stop Becton from selling that version in Belgium, finding prima facie infringement in relation to the old version. The Court of Appeal held that it was not bound by that assessment and that BBM had provided no other evidence, such as a report by a party expert, to substantiate that there were indications of infringement by either product at the time it had filed the ex parte request.
 
The result of the action was that all evidence collected at Becton during the saisie had to be returned. BBM was ordered to refrain from using any of that evidence, at a penalty of 50.000 EUR per violation of that order. Although the Court of Appeal imposes no sanction on BBM for lack of candour, the judgment does mention BBM’s failure to disclose that the German appeal court had announced at trial that one of the products at issue do not infringe. In view of the Court’s recent case law on the applicant’s duty of full and adequate disclosure (see Inteo IP Report 5), this may well have been one of the factors tilting the case in Becton’s favour.

[Note: we were informed after publication that BBM will file a point-of-law appeal against the judgment before the Cour de Cassation]

Trade marks – technical function - exclusively and necessary – In case T-44/16, the General Court upheld EUIPO’s decision that Novartis’ figurative EU trade mark is invalid because it consists exclusively of a shape necessary to obtain a technical result (Article 7.1, e), ii) EUTMR). Novartis had registered the following sign as a trade mark for pharmaceutical preparations for Alzheimer’s disease:

Novartis markets a transdermal patch as depicted in the trade mark for the treatment of Alzheimer’s disease. The EUIPO Cancellation Division upheld SK Chemicals’ application for a declaration of invalidity and the Board of Appeal confirmed that decision. Before the General Court, Novartis argued inter alia that EUIPO had misinterpreted the terms ‘exclusively’ and ‘necessary’ in Article 7.1, e), ii) EUTMR.
 
On ‘exclusively’, Novartis submitted that for Article 7.1, e), ii) to apply, the various characteristics of the trade mark should all refer to a single technical result. The Board of Appeal identified several characteristics that all applied to different technical results. For instance, the square shape was to facilitate storage, whereas the knobs surrounding the patch create a space between the patch during transport. Novartis’ argument was that, when the features of the mark refer to several technical solutions, that does not prevent the use of a single technical solution by other companies. The General Court dismissed that plea. It holds that Article 7.1, e), ii) EUTMR (and its predecessor in the CTMR) applies when each of the essential technical characteristics of the trade marks has a technical function, even if it is not a single technical function.
 
In relation to ‘necessary’, Novartis contended that there are plenty of other shapes available to obtain the technical results identified. The Court held that that alone does not mean that the registration of a shape would have no effect on the availability of the technical solution to other companies. As the Court of Justice held in relation to the equivalent provision in the Design Regulation in case C-395/16, it cannot be excluded that a company would register all shapes that lead to the technical result, resulting in an effective monopolization of the technical result.

Trade marks and freedom of expression – On 12 April 2018, the President of the Brussels commercial court issued a request for a preliminary ruling to the Benelux Court of Justice. The court asks whether, and in what circumstances, freedom of artistic expression amounts to due cause for trade mark use. An artist reproduced Dom Pérignon trade marks in a collection of paintings and erotic photographs under the name 'Damn Pérignon'. He also sold T-shirts depicting the paintings.

Cedric.Art BVBA

The court issued an injunction for the T-shirts but decided to refer the matter of the paintings and the photographs to the Benelux Court of Justice for a preliminary ruling. The questions asked are whether freedom of expression is “due cause” for trade mark use and, if it is, what criteria must be taken into account to balance that freedom with the rights of trade mark proprietors. The Commercial Court adds a list of potentially relevant criteria, including the commercial nature of the expression, the reputation of the trade mark, the potentially negative impact on the trade mark’s reputation and the intensity of the use in terms of volume, time and territory. Because this is an action under (the Benelux implementation of) Article 10(6) of the EUTMD (use other than use for the purpose of distinguishing goods or services), the question was referred to the Benelux court of justice. However, 'due cause' is a concept of EU trade mark law so it is not unlikely that that court will ultimately turn to the EU Court of Justice for further guidance.

Contact - For more information about the topics covered in this newsletter, please contact our lawyers Kristof Neefs (kristofneefs@ip.be) or Sofie Cubitt (sofiecubitt@ip.be). This newsletter is for information purposes only and it does not constitute legal advice.

Tags patents, procedure, trade marks, saisie contrefaçon, pharmaceuticals