A walk on the WILD side

Case No. 4A_234/2018 ¦ Decision of 28 November 2018 (Supreme Court) on appeal against HG 13 20 ¦ Decision of 08 February 2018 (Commercial Court Berne, unpublished)

Nothing is currently surfacing at the FPC. So I dissected yet another trademark case over the holidays, this time from the Supreme Court.

To put this case in context, it is helpful to know that WILD Heerbrugg was a Swiss company established in 1921 that produced high quality optical instruments; see the Virtual Archive of WILD Heerbrugg for further information. The company merged with Ernst Leitz Wetzlar GmbH in 1986 to form the WILD Leitz Group.

Leica logo

When Leica Holding B.V. was established in 1990, the name ‘WILD’ disappeared. After Leica Camera was spun off in 1996, the remaining group split into Leica Geosystems and Leica Microsystems in 1997.

But the name ‘WILD’ did not disappear completely; it still lives on: The former Austrian production site of WILD Heerbrugg was transformed into the WILD group of companies.

The old trademark ‘WILD Heerbrugg’ and some related signs had been abandoned by the aforementioned companies. However, the plaintiff in the present matter apparently got interested in them later — and troubled both Leica and the WILD Group.

The plaintiff Thomas Oelmayer1 sought a declaratory judgment against WILD Elektronik und Kunststoff GmbH & Co KG (a member of the WILD Group of companies) at the Commercial Court Berne that the Swiss part of the international trademark registration ‘WILD ELECTRONICS’ (stylised; see WIPO Global Brand Database, 837 979 ) was invalid, based on his trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864).

I could not spot any connection between the plaintiff and the former Wild Heerbrugg company, neither in the judgment nor by my own research. The defendant countersued for nullity of Mr Oelmayer’s trademark and argued that it was an abusive registration.

Walk on the wild side (Lou Reed, 1972)

Note that this ground of nullity is not codified in the TmPA. But according to established case law of the Supreme Court, no protection can be claimed for registered trademarks if they have not been filed for the purpose of use, but with the intention of preventing the registration of corresponding signs by third parties, of increasing the scope of protection of actually used trademarks (127 III 160, ¶1a) or of obtaining financial or other advantages from the previous user (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.4). The absence of an intention to use entails the invalidity of the registered trademark (127 III 160, ¶1a; 4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5). The inadmissibility of such trademarks registered without the intention to use them and thus of misuse constitutes, in addition to the non-inclusion of use (Art. 12(1) TmPA), an independent fact for the loss of the trademark right, and the respective owner of the trademark cannot invoke the grace period for use (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5).

And, indeed, the Commercial Court Berne held on the basis of various circumstances that Mr Oelmayer filed the trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864) — as well as an earlier stylised trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 567 937) which was not the subject of the dispute — without the intention to actually use it, but with the intention to attack existing trademarks and to demand money for the settlement of trademark disputes. By registering the word trademark ‘WILD HEERBRUGG’, the applicant sought, in disputes with Leica Geosystems AGLeica Microsystems Holdings GmbH and with WILD Elektronik und Kunststoff GmbH & Co KG, to counter the objection that the grace period for the use of the earlier stylised trademark ‘WILD HEERBRUGG’ (CH’937) had expired. The Commercial Court therefore held that the filing of the trademark ‘WILD HEERBRUGG’ (CH’864) was abusive. Defendant’s counterclaim for invalidity of Mr Oelmayer’s trademark was thus approved. All costs were clapped on the plaintiff, in view of the abuse.

Plaintiff’s initial claim had been written off because it had become devoid of purpose: Defendant’s Swiss designation of the international trademark had not been renewed in 2014. In my understanding, this happened by accident. The defendant later applied for a Swiss national trademark; see Swissreg, CH 675 230.

Defendant’s stylised trademark

Opposition proceedings between the same parties are currently pending at the IPI.

Now, how does a court determine the lack of an intention to actually use a trademark?

In general terms, the person who derives rights from it must prove a fact (Art. 8 CC); thus, the party who invokes this ground for invalidity (cf. 127 III 160, ¶1a) bears the burden of proof for the lack of intention to use. However, the lack of intention to use is a negative and, moreover, an internal fact which can hardly be proven positively. The Supreme Court therefore assumed with the doctrine that, within the framework of the duty to cooperate, the opposing party may be required to document or at least claim the reasons why the registration of the trademark forms part of a fair trademark strategy, despite the inconsistencies which the plaintiff had pointed to. If this explanation appears to the judge to be untrustworthy, the abstract proof must suffice for the typically defensive constellation within the overall assessment (4A_429/2011, ¶5.1 with reference to EUGEN MARBACH, Markenrecht, SIWR Bd. III/1, 2nd ed. 2009, ¶1446).

Mr Oelmayer lodged an appeal to the Supreme Court, but failed.

The Supreme Court held that the Commercial Court had established the facts well in accordance with the law, and parties cannot allege facts beyond that; Art. 105 (1) FCA. If, for example, the appellant submitted to the Supreme Court that he had documented acts of use (preparation) and thus emphasised his abstract will to use by preparing a business plan two years before filing the application, submitting a license agreement concluded in 2014, applying for several patents (which I could not spot in [email protected]), seeking financing possibilities and presenting the “surgical microscope” project, he only criticised in an inadmissible manner the assessment of evidence in the first instance. By asserting that the 2014 license agreement had at least implicitly existed since the trademark had been filed, because it had been intended from the outset to license or transfer the trademark to the company to be established, he departs from the findings of fact in the contested decision without raising a sufficient complaint in this respect. Further, the Supreme Court held that the appellant did not raise any admissible objection in connection with the determination of the Commercial Court that the procedural conduct of the appellant indicated that his evidence of intention to use had either only been alleged or had only been produced with a view to the pending proceedings. The same applies to the findings in the contested decision, according to which his actions with regard to the trademark registrations indicate the intention to be bought out of the way by the parties concerned or according to which there are concrete indications that the appellant was seeking to negotiate financial advantages.

The Supreme Court thus dismissed the appeal; the judgment is now final. 

Reported by Martin WILMING

1 The decision is partially anonymised, but the name Oelmayer is still mentioned in plain language (¶A.h). Anyway, the parties are most easily identifiable with Swissreg based on the trademarks at stake. Since Thomas Oelmayer is a public person (see Wikipedia), I chose to not beat around the bush, in accordance with the Codex of this Blog — take me back ↺

BIBLIOGRAPHY

Case No. 4A_234/2018 ¦ Decision of 28 November 2018 (Supreme Court) on appeal against HG 13 20 ¦ Decision of 08 February 2018 (Commercial Court Berne, unpublished)

Thomas Oelmayer
./.
WILD Elektronik und Kunststoff GmbH & Co KG

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE

Court Clerk:

  •  Dr. Matthias LEEMANN

Representative(s) of appellant / plaintiff:

Representative(s) of respondent / counter-claimant:

COMMERCIAL COURT DECISION

UPDATE 14 August 2019:

A kind reader has sent me a copy of this first instance decision earlier today, which is now included hereinbelow.

Fullscreen view (new tab)

SUPREME COURT DECISION

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

 

Supreme Court confirms FPC’s decision O2015_008 — Omega’s appeal dismissed

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC)¦ ‘Balancier de montre’

Reading time: 4 minutes

As to the background of this matter, please see the report about the main hearing on this Blog here and the discussion of the first instance decision of the FPC on this Blog here.

In brief, Omega had alleged infringement of its EP 1 837 719 B1; see the EPO Register and Swissreg for further bibliographic details of the patent in suit. With decision of 14 March 2018, the FPC had rejected Omega’s claim for infringement while Tudor’s / Detech’s counterclaim for invalidity had been allowed; EP(CH) 1 837 719 B1 had been declared invalid.

The Supreme Court now dismissed Omega’s appeal, i.e. confirmed the FPC’s decision. EP(CH) 1 837 719 B1 is thus finally declared invalid.

The issues dealt with by the Supreme Court in the decision, in brief:

  1. Age of a prior art document 

On appeal, Omega has argued that the FPC took an unrealistic piece of prior art into account in the assessment of inventive step. Indeed, the FPC had considered a document that was published already about a century ago, i.e. US 759,914. In view of the evolution of watchmaking since then, Omega considered it unrealistic that such a document was actually considered as a starting point in the assessment of inventive step. Consequently, Omega alleged a violation of Art. 56 EPC.

The Supreme Court did not buy this argument. It is held in no uncertain terms that everything that had been made publicly available — including old documents — forms part of the prior art. One cannot exclude a document from consideration in the assessment of inventive step just because of its age; see ¶3.1.3.

Écarter un document de ceux que consulterait l’homme de métier en raison de son ancienneté reviendrait à priver les brevets ayant dépasé un certain âge de toute valeur dans le cadre de l’analyse de l’effet invenif. Un telle pratique ne saurait être déduite de l’art. 65 CBE.

Reference to some case-law of the Boards of Appeal of the EPO did not help either: The mere age of a document has not been decisive in T 479/00, T 366/89, T 1000/92 and T 334/92. The Supreme Court notes that the obsolescence or outdatedness of a technology had been the key issue in these decisions, which excluded the respective documents from consideration by the skilled person. Apparently, no such case had been established by the appellant in the present matter.

  1. Incompatibility of technical teachings

The balance wheel of US 759,914 has inertia blocks that must have been placed from the inside, as claimed by the patent in suit; see the screw head on the inner side of the felloe in the figures below.

But what is still missing here is the stud (‘plot’) according according to the patent in suit. Omega argued that the skilled person would not have added studs to the balance of US 759,914 in view of the risk to impair the automatic adjustment of its temperature dependent moment of inertia, which is the sole purpose of this invention. However, the Supreme Court holds that this is not in agreement with the fact findings of the FPC, and thus did not consider this argument any further.

  1. Choice of the closest prior art

The FPC had not explicitly motivated its choice of US 759,914 as the closest prior art in the assessment of inventive step in accordance with the problem-and-solution approach.

Kind reminder …

And the Supreme Court indeed acknowledges that it would have been desirable if it had done so.

Ainsi, il eût été souhaitable que la juridiction précédente détaille la première étape de l’approche problème-solution comme elle l’a fait pour les autres étapes de son examen.

But still, in view of the FPC’s detailed discussion of how the skilled person had arrived at the invention starting from US 759,914 without inventive merit, it became sufficiently clear how close both inventions actually are, and why US’914 thus is a reasonably chosen closest prior art.

  1. Late filed auxiliary requests / claim limitations

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. The FPC had not admitted this request into the proceedings anymore, with reference to O2015_012.

Omega had challenged this on appeal. But while this appeal has been pending, the Supreme Court ruled on the appeal against O2015_012 — and backed the practice of the FPC in this respect; decision 4A_543/2017 of 08 May 2018, see this Blog here. Accordingly, Omega did not succeed with this argument, either.

In sum, Omega’s appeal was dismissed and EP(CH) 1 837 719 B1 is now finally declared invalid.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC) ¦ ‘Balancier de montre’

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of appellant / plaintiff:

Representative(s) of defendants / respondents:

SUPREME COURT DECISION 

Fullscreen view (new tab)

FPC DECISION 

Fullscreen view (new tab)

PATENT IN SUIT

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.




Omega ./. Montres Tudor et al. — Finding balance …

Case No. O2015_008 ¦ Decision of 14 March 2018 ¦ ‘Balancier de montre’

Omega logo

We have reported on the background of this case and the main hearing on this Blog here. In brief, infringement of Omega‘s EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 as granted reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

This is best understood with the figures of the patent at hand:

Tudor logo

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612. Defendants Tudor and Detech denied infringement and countersued for invalidity.

Let’s get to the details now, at least to some extent. The decision is a booklet of 58 pages, and I will thus only comment on what I believe are the most relevant issues of the case.

The requests

Faced with a counterclaim for invalidity, Omega defended the patent substantially as granted as the main request (MR; see the slight amendment in feature #5, below), and with two auxiliary requests (AR1 and AR2) to a more limited extent only. In the feature analysis below, claim 1 according to the MR is structured into features 1-7. Claim 1 according to AR1 comprises features 1-8, and AR2 comprises features 1-9, respectively.

FR EN
1 Balancier pour mouvement d’horlogerie Balance for a timepiece movement
2 comportant une serge (3) including a felloe (3)
3 des bras (4) reliant la serge (3) à l’axe de balancier arms (4) connecting the felloe (3) to the balance staff
4 et des masselottes (11) permettant d’ajuster le balourd et de régler le moment d’inertie and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia
5 caractérisé en ce que la serge (3)  comporte des plots (7) dirigés radialement1 vers l’intérieur characterized in that the felloe (3) includes studs (7) directed radially1 inwards
6 ladite serge (3) et lesdits plots (7) étant traversés par un trou taraudé (9) a threaded hole (9) passing through said felloe (3) and said studs (7)
7 dans lequel lesdites masselottes (11) sont vissées depuis l’intérieur into which said inertia blocks (11) are screwed from the inside
8 les masselottes peuvent être mues indépendamment les unes des autres2 the inertia blocks can be moved independently of each other2
9 le serge présente unse surface externe de diamètre constant sur tout son pourtour3 the felloe has an external surface of constant diameter all around its circumference3

1 Note that ‘radialement’ / ‘radially’ is not included in claim 1 as granted.
2 Additional feature of claim 1 in AR1 vis-à-vis the MR.
3 Additional feature of claim 1 in AR2 vis-à-vis AR1.

Omega’s requests for injunctive relief are adapted accordingly in MR, AR1 and AR2, to conform with the respective requests to maintain the patent. The requests for injunctive relief additionally refer to an illustration of the attacked embodiment that is reproduced below. However, I have amended the reference numbers in accordance with those used in the patent.

Illustration of the claim features included in the requests for injunctive relief

The element marked-up with ‘Δ’ in the above illustration refers to a feature which was not literally fulfilled by the attacked embodiment, but for which infringement under the DoE was alleged, i.e. feature #7 in the table above:

the inertia blocks (11) are screwed [into the threaded hole (9)] from the inside

Rather, the request for injunctive relief read as follows:

les masselottes sont dépourvues de tête et dotées de lobes internes permettant leur vissage depuis l’extérieur de la serge

I.e., in English language:

the inertia blocks are headless and equipped with internal lobes allowing them to be screwed from outside the felloe

Claim construction re feature #7

Now, what does it mean in French that

les masselottes sont vissées depuis l’intérieur?

Does it only require that the inertia blocks can be adjusted from the inside, irrespective of how / from which direction they had been initially placed in the hole, i.e. from the inside or outside of the felloe? Or is it mandatory that the inertia blocks at least could have been placed in the hole from inside of the felloe? Note that EP’719  only discloses inertia blocks with heads (13) that cannot go through the hole, i.e. they must be / have been placed from inside of the felloe; see e.g. ¶[0010].

Anyway, I leave this tricky linguistic question to the francophones to decide for themselves. The decision holds that this feature #7 only requires that the inertia blocks could have been inserted and screwed from the inside during the assembly of the balance wheel (by an access between the serge and the centre of the serge) in the hole traversing the stud and the felloe.

Consequently, feature #7 does not cover inertia blocks which, already present in the tapped holes of the serge and the studs, can be screwed from the inside for the purpose of adjusting the inertia and unbalance, but which would not have previously been inserted and screwed into the corresponding hole from the inside of the felloe.

Novelty

The balance wheel in DE 864 827 comprises a stud (‘plot’) in the sense of feature #5; see the section 1g in the figures below . But since the screws with the inertia blocks have a head on the outside of the felloe, they do not meet the definition of feature #7 as construed above.

Novelty over DE 864 827 was thus acknowledged.

On the other hand, the balance wheel of US 759,914 has inertia blocks must have been placed from the inside; see the screw head on the inner side of the felloe in the figures below.

But what is missing here is the stud (‘plot’) according to feature #5. Thus, novelty was acknowledged over US 759,914.

The balance wheel of US 2,958,997 has some axial screws (21) which are not inertia blocks. On the other hand, it is not possible that the inertia blocks (3) have been placed from the inside since the screw head is outside of the felloe.

US 2,958,997 (Fig. 4)

Features #6 and #7 were not considered anticipated, and novelty was thus acknowledged.

Finally, novelty over the balance wheel ‘Jean Martin’ is discussed, a photograph of which is reproduced in the decision (don’t blame me for the poor quality, it’s in the original):

Balance wheel ‘Jean Martin’

Here, the studs are arranged axially on top of the felloe. The hole thus only passes through the stud, not through the felloe. Features #6 and #7 were not considered anticipated, and novelty was thus acknowledged.

Inventive step

Inventive step has been assessed on the basis of US 759,914 as closest prior art; see figures above. The distinguishing features are #6 and #7, i.e. the studs (which are directed inwards), and the inertia blocks arrangeable in a hole through the stud (and the felloe) from the inside.

Following Omega’s proposal, the objective technical problem has been defined as follows:

Increasing the diameter of a balance wheel without modifying its inertia.

Now, here is the definition of a stud (‘plot’) according to Berner (FR/EN):

Petite pièce métallique, généralement cylindrique qui sert de butée ou qui renforce la partie d’une pièce qui doit recevoir une goupille ou une vis.

Small metal part, usually cylindrical, used as a stop or as a means of strengthening a part that takes a pin or screw.

It is held in the decision that, with this skilled person’s knowledge in mind, it was obvious to arrange studs on the felloe to reinforce the holes. But on which side? On the inside or the outside of the felloe? When placed on the inside, the diameter of the felloe can be larger. Anyway, with reference to T107/02 and T739/08, it is held that a choice from a very limited number of alternatives without an unexpected effect cannot be considered inventive.

The auxiliary requests did not succeed, either. As to AR1, the inertia blocks can be moved independently of each other already in US 759,914. As to AR2, the felloe has an external surface of constant diameter all around its circumference already in US 759,914.

Late request – belated?

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. This request was not admitted into the proceedings anymore, with reference to O2015_012. In particular, the decision holds that the expert opinion did not contain new facts or arguments of a technical nature which had not been argued by the parties.

In a nutshell

Omega’s claim for infringement has been rejected, Tudor’s / Detech’s counterclaim for invalidity has been allowed and EP(CH) 1 837 719 B1 declared invalid.

The decision can still be appealed to the Supreme Court.

UPDATE 14 May 2018:

The decision has been appealed to the Supreme Court.

UPDATE 22 October 2018:

The appeal has been dismissed by the Supreme Court (4A_282/2018; reasons not yet available).

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Decision of 14 March 2018 ¦ ‘Balancier de montre’

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Judge(s):

  • Dr. Mark SCHWEIZER
  • Frank SCHNYDER
  • Dr. Tobias BREMI
  • Dr. Philippe DUCOR
  • Christoph MÜLLER

Judge-rapporteur:

  • Frank SCHNYDER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

FULL TEXT DECISION

Fullscreen view (new tab)

PATENT IN SUIT

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.




Combining a counterclaim with a main claim against a party which hasn’t sued you?

Case No. O2016_016 ¦ Decision of 16 May 2017 ¦ “Einbezug zusätzlicher Parteien mit Widerklage”

HEADNOTE

Art. 64 CPC; Fixation of the parties to the proceedings.

Litispendence results in a fixation of the parties to the proceedings. Further parties cannot be included into pending proceedings – except for an admissible substitution of a party (Art. 83 CPC) or for other reasons provided by law.

The setup of this case is straightforward: A had sued B for nullity of the patent in suit. B lodged a counterclaim for infringement against A with his reply.

In the very same proceedings, B also sued X AG and Y GmbH for infringement. B argued that this voluntary joinder was admissible in view of Art. 71 CPC: the duties of all these parties result from similar circumstances, ie cooperation with respect to the alleged infringement of the patent in suit.

However, the President held that the parties are fixed upon litispendence; Art. 62 and Art. 64 CPC. Exceptions would only be the admissible substitution of a party (Art. 83 CPC) or other reasons provided by law — which have not been applicable here. A voluntary joinder under Art. 71 CPC would have been possible, but only in separate proceedings.

The President thus dismissed the cases against X AG and Y GmbH for lack of a procedural requirement; Art. 59(1) CPCArt. 23(1) lit. a PatCA.

Court fees of CHF 10’000,– have been imposed on B. No party compensation has been awarded: There was no need to even invite X AG and Y GmbH to file reply.

Reported by Martin WILMING

P.S.:
Admittedly, I am frustrated that I have no clue about the parties this time …

BIBLIOGRAPHY 

Case No. O2016_016 ¦ Decision of 16 May 2017 ¦ “Einbezug zusätzlicher Parteien mit Widerklage”

A AG
(Nullity claimant; defendant in countersuit re infringement)

X AG
(Defendant re infringement)

Y GmbH
(Defendant re infringement)

./.

B
(Nullity defendant; counter-claimant re infringement)

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of A AG:

Representative(s) of B:

  • Dr. Simon HOLZER (MLL)
  • Dr. Mark SCHWEIZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters
  • Dr. Andreas LEDL (Maiwald), assisting in patent matters

DECISION IN FULL

Download (PDF, 111KB)

BE ON THE KNOW

You liked this? And you would like to be notified of new posts? Here you go.