Vital signs; More on enabling disclosure and inventive step

The IPKat spotted another non-English Court of First Instance decision yesterday on Community trade marks (it's in German and French only): Rechtssache T‑111/06 Wesergold Getränkeindustrie GmbH & Co. KG v Harmonisierungsamt für den Binnenmarkt; Lidl Stiftung & Co. KG.. So far as the Kat can tell, Wesergold applied to register the sign depicted here as a Community trade mark for non-alcoholic drinks and fruit drinks/juices in Class 32. Lidl opposed, citing an earler German registration of the word mark VITAFIT for fruit juices, fruit drinks and nectars in the same class. Lidl alleged a likelihood of confusion, citing similarity of the marks and identity/similarity of the goods.

What happened next? The IPKat's not too sure. He thinks the Opposition Division and the Board of Appeal upheld the opposition and that the CFI has dismissed Wesergold's further appeal -- but his katty whiskers tell him that he has missed something significant along the way. As usual, can some kind person email him here and let him know.


Last Sunday this weblog published a note (here) on a recent patent case in which the learned judge (Mr Justice Kitchin) said, at para.204:

"... an earlier publication will only deprive a patented invention of novelty if it discloses the invention and ... the skilled person would be able to perform the disclosed invention if he attempted to do so by using the disclosed matter and his common general knowledge. In my judgment the same approach must apply to obviousness. There can be no justification for finding that a "near miss" which does not enable the claimed invention nevertheless renders it obvious".

Team blogger Jeremy took issue with this, commenting:

"While the notion that a disclosure must be enabling is crucial to novelty, I don't see why it should be a sine qua non for obviousness: if it were, then how does the 'obvious to try' criterion stand, where something that exists in the prior art does not in fact constitute an enabling disclosure but suggests clear lines of thinking that will lead to what the patent applicant believes to be an invention?"

Now Trevor Cook (Bird & Bird) has come to the judge's rescue. Says Trevor:

"I think that you are being somewhat unfair on the Judge by omitting to quote para 205, and with which para 204 ought be read in conjunction, and where he goes on to repeat his earlier finding (at para 203) that the patent in which these claims for obvious but non-enabled desiderata appear, is insufficient. Insufficiency and obviousness are in a sense opposites, and so I can see some logic to his approach".

The IPKat, who is more concerned with statements of law that students will pick up and run around with than with whether the judge's findings were correct, wonders what his readers think.