ECJ Trade marks – Directive 89/104/EEC – Article 5(1) – Exclusive rights of the trade mark proprietor – Shared use of a trade mark – Consent – Revocation of consent to use a trade mark – Unfair competition Judges: Cruz Villalon AG Citations: C-661/11, [2013] EUECJ C-661/11 Links: Bailii Statutes: Directive 89/104/EEC 5(1) Jurisdiction: European … Continue reading Martin y Paz Diffusion Sa v David Depuydt: ECJ 18 Apr 2013
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
ECJ Trade marks Articles 5(1)(b), 5(2) and 6(1)(b) of Directive 89/104/EEC Requirement of availability Three-stripe figurative marks Two-stripe motifs used by competitors as decoration Complaint alleging infringement and dilution of the mark. Citations: C-102/07, [2008] EUECJ C-102/07 Links: Bailii Statutes: Directive 89/104/EEC 5(1)(b) 5(2) 6(1)(b) European, Intellectual Property Updated: 14 July 2022; Ref: scu.266937
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability of Article 5(1) of Directive 89/104/EEC – Conditions on which comparative advertising is permitted Whether reference to the competitor’s trade mark indispensable Citations: C-533/06, [2008] … Continue reading O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited: ECJ 31 Jan 2008
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
Use of trade mark in coparative advertising Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a trade mark – Comparative advertising Directives 84/450/EEC and 97/55/EC Article 3a(1) Conditions under … Continue reading O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited: ECJ 12 Jun 2008
The court gave its reasons for allowing the claimant to bring additional witness evidence as to confusion as opposed to survey evidence. Judges: Longmore, Lewison LJJ, Sir Robin Jacob Citations: [2013] EWCA Civ 319 Links: Bailii Jurisdiction: England and Wales Citing: See Also – Interflora Inc and Another v Marks and Spencer Plc and Another … Continue reading Interflora Inc and Another v Marks and Spencer Plc: CA 5 Apr 2013
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have allowed the calling of evidence of the kind that Interflora wishes to call and have … Continue reading Marks and Spencer Plc v Interflora Inc and Another: CA 20 Nov 2012
Application for permission to to adduce witness evidence at trial from witnesses gathered from two pilot surveys. Judges: Arnold J Citations: [2012] EWHC 1722 (Ch) Links: Bailii Jurisdiction: England and Wales Citing: See Also – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 29-Apr-2010 Response to request for clarification of reference … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 20 Jun 2012
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
ECJ Trade marks – Directive 89/104/EEC – Article 5(1)(b) – Filling of cans already bearing a sign similar to a trade mark – Service provided under an order from and on the instructions of another person – Action taken by trade-mark proprietor against the service provider Citations: [2011] EUECJ C-119/10 Links: Bailii Statutes: Directive 89/104/EEC … Continue reading Frisdranken Industrie Winters v Red Bull Gmbh: ECJ 15 Dec 2011
Response to request for clarification of reference to the ECJ. Judges: Arnold J Citations: [2010] EWHC 925 (Ch) Links: Bailii Jurisdiction: England and Wales Citing: See Also – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009 Each of the parties provided a service delivering flowers. The claimant had a trade … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 29 Apr 2010
ECJ Directive 89/104/EEC – Trade mark – Right of the proprietor of a registered trade mark to oppose the illegal use of its mark – Use of a sign – Definition – Filling cans on behalf of third – Export Products – Likelihood of confusion – Target to take into consideration. Citations: C-119/10, [2011] EUECJ … Continue reading Frisdranken Industrie Winters v Red Bull Gmbh: ECJ 14 Apr 2011
ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed under the external transit procedure or the customs warehousing procedure – Opposition of the trade mark … Continue reading Class International v Colgate Palmolive: ECJ 18 Oct 2005
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
Trade marks – Directive 89/104/EEC – Article 5 – Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark – Consent given in a situation where there is shared use – Possibility for that proprietor to put an … Continue reading Martin y Paz Diffusion Sa v David Depuydt: ECJ 19 Sep 2013
ECJ Trade marks – Keyword advertising on the internet – Selection by the advertiser of a keyword corresponding to a competitor’s trade mark with a reputation – Directive 89/104/EEC – Article 5(1)(a) and (2) – Regulation (EC) No 40/94 – Article 9(1)(a) and (c) – Condition that one of the trade mark’s functions be adversely … Continue reading Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited: ECJ 22 Sep 2011
ECJ (Opinion) Trade marks – Keyword advertising corresponding to the trade mark of a competitor of the advertiser – Trade marks with a reputation – Blurring – Tarnishment – Free-riding – Directive 89/104 – Article 5(2) – Regulation No 40/94 – Article 9(1)(c). Jaaskinen AG C-323/09, [2011] EUECJ C-323/09 Bailii Directive 89/104 European Citing: Reference … Continue reading Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited: ECJ 24 Mar 2011
The court considered the form of the injunction requested to give effect to the earlier full judgment in the case brought, requiring the defendant to discontinue any use of the terms complained of as infringing the claimant’s registered marks as internet search terms. Arnold J [2013] EWHC 1484 (Ch) Bailii England and Wales Citing: See … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 12 Jun 2013
The defendant objected to the introduction of certain evidence by the claimant under a Civil Evidence Act notice. Claimants seeking to adduce academic journals as expert evidence Arnold J [2013] EWHC 936 (Ch), [2013] WLR(D) 183 Bailii, WLRD Civil Procedure Rules 35 England and Wales Citing: See Also – Interflora Inc and Another v Marks … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 15 Apr 2013
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
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding information which would allow it to trade lawfully. The Court was now asked: ‘whether a person who … Continue reading Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012
ECJ Grand Chamber – Trade marks – Internet – Offer for sale, on an online marketplace targeted at consumers in the European Union, of trade-marked goods intended, by the proprietor, for sale in third States – Removal of the packaging of the goods – Directive 89/104/EEC – Regulation (EC) No 40/94 – Liability of the … Continue reading L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoire Garnier and Cie, L’Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited: ECJ 12 Jul 2011
loreal_bellureECJ2009 ECJ Approximation of laws – Trade marks Directive 98/104/EEC Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising Article 5(2) – Unfair advantage taken of the reputation of a trade mark – Comparative advertising Directives 84/450/EEC and 97/55/EEC Article 3a(1) – Conditions under which comparative advertising is permitted … Continue reading L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoires Garnier and Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd: ECJ 18 Jun 2009
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
Interflora had been refused permision to adduce survey evidence, but now appealed against refusal of permission to adduce evidence of confusion by witness statements.
Held: Appeal allowed. Reasons to follow. . .
‘The Claimants (‘Interflora’) seek the permission of the Court to adduce in evidence the witness statements of 13 witnesses at the trial of this action scheduled for mid April 2013. Interflora do not accept that they need the Court’s permission, but . .
Europa Directive 89/104/EEC Trade marks Article 4(4)(a) Trade marks with a reputation – Protection against the use of a later identical or similar mark Use which takes or would take unfair advantage of, or is or . .
