The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site. Held: The ECJ had not yet clarified the law on accessory liability in trade mark infringement, and the legislation remained unclear. Many of the direct sellers were held to be … Continue reading L’Oreal Sa and Others v Ebay International Ag and Others: ChD 22 May 2009
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own. Held: Applying Davidoff, the words can also be read as extending to goods or services which are identical with or similar to those … Continue reading Mastercard International Incorporated v Hitachi Credit (Uk) Plc: ChD 8 Jul 2004
The claimant, manufacturers of perfumes, complained that the defendants, manufacturers of smell-alike products, were in breach of the Directive in marketing their products using lists which identified those of the claimants products to which they were intended to smell similar. Held: The claim succeeded. The defendant’s use of the registered marks in the comparison lists … Continue reading L’Oreal Sa and Others v Bellure Nv and Others: CA 21 May 2010
The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for confusion of marks: ‘i) The likelihood of confusion must be appreciated globally, taking account … Continue reading Julius Samann Ltd and others v Tetrosyl Ltd: ChD 17 Mar 2006
The several defendants appealed convictions for breaches of section 92 of the Act. Held: The section presumed that a civil infringement of the Trade Mark had taken place. Accordingly any of the defences available to a civil action must be available also against a criminal action. Furthermore there was no conflict between the Act and … Continue reading Regina v Johnstone, etc: CACD 1 Feb 2002
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the appellant set up a company with a similar name and applied for the mark ‘CHINA WHITE’. The … Continue reading Harrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE): CA 27 Jul 2004
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights. Held: The burden of proving exhaustion of rights lay on the defendant, unless he could show that the result would be … Continue reading Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another: ECJ 8 Apr 2003
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance. Held: The function of a trade mark was to guarantee the identity or origin of the goods, … Continue reading Arsenal Football Club plc v Reed: ECJ 12 Nov 2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the design was functional. Held: A sign consisting exclusively of a product’s shape was unregistrable, if it was … Continue reading Koninklijke Philips Electronics NV v Remington Consumer Products Ltd: ECJ 18 Jun 2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied. Held: The prohibition of quantitative restrictions on imports does not preclude restrictions justified on the grounds of the protection of industrial and commercial property. Such … Continue reading Boehringer Ingelheim KG and Others v Swingward Ltd and Another: ECJ 23 Apr 2002
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual item in respect of which the exhaustion was pleaded. National rules providing for exhaustion … Continue reading Sebago and Maison Dubois et Fils SA v GB-Unic SA: ECJ 1 Jul 1999
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. Articles 5 to 7 of the directive embody a ‘complete harmonisation’ of the rules … Continue reading Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH: ECJ 16 Jul 1998
Registration is to be refused in respect of descriptive marks, ie marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for. Article 3(1)(c) therefore prevents descriptive signs and indications from being reserved to one undertaking alone … Continue reading Windsurfing Chiemsee Produktions and Vertriebs GmbH v Boots und Segelzubehor Walter Huber and another: ECJ 4 May 1999
The applicant sought to register a smell as a trade mark. It filed a chemical formula, a description, and a sealed container holding an example of the smell. Held: A non-visual mark was capable of registration provided it could be represented so as to be precisely defined, so as to allow users of the registry … Continue reading Sleckmann v Deutsches patent-und Markenamt: ECJ 12 Dec 2002
Though a company could prevent parallel import within the EU, it could not prevent goods sold outside the EU but without restriction on re-sale, being subsequently re-sold into the EU. The removal of a numbering mark did not materially reduce its quality. Citations: Times 24-May-1999, [1999] RPC 631 Statutes: Trade Mark Council Directive 89/104/EEC Jurisdiction: … Continue reading Zino Davidoff SA v A and G Imports Ltd: ChD 24 May 1999
Applications for the registration of three dimensional trade marks had been referred to the court on the question of whether they could be refused for lack of distinctiveness. Held: The tests for three dimensional marks were no more strict than for other marks. When looking at the grounds for refusal, the public interest was to … Continue reading Linde AG, Winward Industries Inc and Rado Uhren AG: ECJ 8 Apr 2003
Interflora complaned that the defendant, in order to advertise its flower delivery service, had paid a third party search engine, usin the claimant’s trade marks to attract traffic. Held: In such a claim, it was not enough to show use of the mark. A claimant had, in addition, to show that a reasonably informed user … Continue reading Interflora Inc and Another v Marks and Spencer Plc: CA 5 Nov 2014
Mark use in search engine was infringing use The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use. … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced references also to the defendants’ web-sites. The bids for these words … Continue reading Interflora, Inc and Another v Marks and Spencer Plc and Another: ChD 22 May 2009
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for distribution within the EU, it had no power to detain them. The goods were agreed … Continue reading Nokia Corporation v Revenue and Customs: ChD 27 Jul 2009
The claimant sought an injunction against the defendants to restrain an alleged trade mark infringement in respect of the use of the mark ‘NUDE’ by the proposed product ‘STELLANUDE’. Held: Despite the differences, it was ‘arguable that the sign STELLANUDE is similar to the mark NUDE.’ The case should be allowed to proceed. Floyd J … Continue reading Nude Brands Ltd v Stella McCartney Ltd and Others: ChD 20 Aug 2009
