IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02). Ms Emanuel appealed to the Appointed Person. Subsequently, Continental Shelf 128 Ltd (CSL) requested that the two appeals be referred to the High Court.The Appointed Person considered his powers to refer … Continue reading Elizabeth Emanuel, Elizabeth Emanuel Double E Crown Device (Trade Mark: Revocation): IPO 27 Jun 2003
A case had been referred to the court as to the interpetation of the articles in the Directive. The court replied asking whether the subsequent Ansul judgement answered the questions raised. Held: By agreement with the parties, only one of the questions was answered, and four remained. The court requested the European court to continue. … Continue reading Re Trade Marks Act 1994 Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 20 Jun 2003
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. Judges: Proudman J Citations: [2011] EWHC 1489 (Ch) Links: Bailii Jurisdiction: England and Wales Citing: Cited – Ladbroke (Football) Ltd v William Hill (Football) Ltd HL 1964 What is substantial copyingThe plaintiff alleged copying of their … Continue reading Future Publishing Ltd v The Edge Interactive Media Inc and Others: ChD 13 Jun 2011
Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat. Held: Lord Neuberger MR said: ‘In my view, insofar as such a question turns on the meaning of any particular passage in the … Continue reading Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl: CA 24 May 2011
The defendants appealed convictions for contempt of court, on the basis of having wilfully interrupted the court. The respondent said that no appeal lay. Held: The statute was ambiguous, and ‘there can be no good reason why a person convicted under s.12 should not have a right of appeal against conviction as well as against … Continue reading Haw and Another v City of Westminster Magistrates’ Court: Admn 12 Dec 2007
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 Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was primarily amongst surfers. The Hearing Officer conducted a ‘multi-factorial’ comparison, and rejected the opposition … Continue reading Bessant and others v South Cone Incorporated; in re REEF Trade Mark: CA 28 May 2002
The court was asked whether the appellant, Airtours Holidays Transport Ltd (formerly MyTravel Group plc), was entitled to recover, by way of input tax VAT charged by PricewaterhouseCoopers LLP in respect of services provided by PwC and paid for by Airtours. Held: The appeal was dismissed (Clarke and Carnwath LL dissenting) For the VAT to … Continue reading Airtours Holidays Transport Ltd v Revenue and Customs: SC 11 May 2016
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
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
The plaintiffs alleged the involvement of the defendant in a conspiracy to defraud. He had been domiciled in England, but had moved to Germany. He denied that the UK court had jurisdiction. The court of appeal said that jurisdiction was determined at the issue of the writ. The defendant appealed. Held: Where one defendant was … Continue reading Canada Trust Co and Others v Stolzenberg and Others (No 2): HL 12 Oct 2000
The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds from banks. The claimant sought summary judgment. Held: The defence as filed proposed no real defence,merely putting the claimant … Continue reading Lewis v Client Connection Ltd: ChD 6 Jul 2011
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The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might justify registration. Clause 12 of the Act clearly envisaged honest concurrent use. Here the name … Continue reading Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch: CA 7 Feb 2000
It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. Citations: Times 20-May-1998 Statutes: Trade Marks Act 1994 11 12(2) Cited by: Appeal from – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik … Continue reading Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998
The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo. Held: The court had to consider both the letter and the surrounding circumstances. A threat need not be direct, and conditionality may not be an answer. The thrust … Continue reading L’Oreal (UK) Limited and Another v Johnson and Johnson and Another: ChD 7 Mar 2000
Fair Coment on Political Activities The defendant newspaper had published articles wrongly accusing the claimant, the former Prime Minister of Ireland of duplicity. The paper now appealed, saying that it should have had available to it a defence of qualified privilege because of the claimant’s status as a politician. Held: The appeal failed (Lords Hope … Continue reading Reynolds v Times Newspapers Ltd and others: HL 28 Oct 1999
The bank claimed that it had been defrauded, and that since an employee of the defendant had taken part in the fraud the defendant was had vicarious liability for his participation even though they knew nothing of it. Held: Where A becomes liable to B as a joint tortfeasor with C in the tort of … Continue reading Generale Bank Nederland Nv (Formerly Credit Lyonnais Bank Nederland Nv) v Export Credit Guarantee Department: CA 23 Jul 1997
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 claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert. Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair in all the circumstances. No confusion was intended; they wanted only to associate their … Continue reading Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd: CA 3 Mar 2004
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the name. The defendants said that they came within the ‘own name’ exception. Held: The appeal … Continue reading Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others: CA 24 Feb 2010
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted registration of esure’s trade mark. Esure now appealed a ruling against it’s … Continue reading Esure Insurance Ltd v Direct Line Insurance Plc: ChD 29 Jun 2007
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled. Held: The claimant’s expert survey evidence was defective in several ways, but even so there was no evidence of confusion under the … Continue reading L’Oreal Sa and others v Bellure NV and others: ChD 4 Oct 2006
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
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Knight Citations: OPP 48009 / 48010 / 48011 Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 12 May 2022; Ref: scu.175836
A combination of defences based on delay was pleaded in a passing off action objecting to the use of a name which the defendants had been using without objection for many years. A permanent injunction was claimed. Held: Oliver LJ said as to the availability of damages in a case of acquiescence to the breach … Continue reading Habib Bank Ltd v Habib Bank AG Zurich: CA 1981
Limitation of Loss from Negligent Mis-statement The plaintiffs sought damages from accountants for negligence. They had acquired shares in a target company and, relying upon the published and audited accounts which overstated the company’s earnings, they purchased further shares. Held: The duties of an auditor are founded in contract and the extent of the duties … Continue reading Caparo Industries Plc v Dickman and others: HL 8 Feb 1990
Reference to Parliamentary Papers behind Statute The inspector sought to tax the benefits in kind received by teachers at a private school in having their children educated at the school for free. Having agreed this was a taxable emolument, it was argued as to whether the taxable benefit was the cost to the employer, or … Continue reading Pepper (Inspector of Taxes) v Hart: HL 26 Nov 1992
Rehearing/Review – Little Difference on Appeal The appellant asked the Court to reverse a decision on the facts reached in the lower court. Held: The appeal failed (Majority decision). The court’s approach should be the same whether the case was dealt with as a rehearing or as a review. Tanfern was limited to appeals from … Continue reading Assicurazioni Generali Spa v Arab Insurance Group (BSC): CA 13 Nov 2002
PI Damages not Reduced for Own Pension The plaintiff policeman was disabled by the negligence of the defendant and received a disablement pension. Part had been contributed by himself and part by his employer. Held: The plaintiff’s appeal succeeded. Damages for personal injury were not to be reduced by deducting the full net value of … Continue reading Parry v Cleaver: HL 5 Feb 1969
Shareholder May Sue for Additional Personal Losses A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter. Held: It need not be an abuse of the court for a shareholder to seek damages against advisers to … Continue reading Johnson v Gore Wood and Co: HL 14 Dec 2000
The claimant said that the defendant’s characterisation of its own products as ‘Good for You’ by reference to a description saying that it did not include the claimant’s product as a component, was a malicious falsehood. The defendant sold other products which did include Aspartame. The court was asked to determine the meanings. Held: The … Continue reading Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd: QBD 15 Jul 2009
The claimant sought damages in defamation in respect of statements made on internet bulletin boards. He pursued the operators of the bulletin boards, and the court now considered the liability of the Internet Service Providers whose systems had inevitably carried the traffic from the bulletin boards to their own customers. Held: The claims were struck … Continue reading Bunt v Tilley and others: QBD 10 Mar 2006
Local Council may not Sue in Defamation Local Authorities must be open to criticism as political and administrative bodies, and so cannot be allowed to sue in defamation. Such a right would operate as ‘a chill factor’ on free speech. Freedom of speech was the underlying value which supported the decision to lay down the … Continue reading Derbyshire County Council v Times Newspapers Ltd and Others: HL 18 Feb 1993
The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to … Continue reading Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd: ChD 1981
(Grand Chamber) The subsequent use against a defendant in a prosecution, of evidence which had been obtained under compulsion in company insolvency procedures was a convention breach of Art 6. Although not specifically mentioned in Article 6 of the Convention the right to silence and the right not to incriminate oneself are generally recognised international … Continue reading Saunders v The United Kingdom: ECHR 17 Dec 1996
Walker v Wilshire still Good Law After successfully appealing, the defendant claimant argued for a substantial part of its costs, saying that the defendant had unreasonably refused ADR. To pursue this, it now sought disclosure of the details of the without prejudice negotiations between them. Held: No distinction is to be made between party-to-party negotiations … Continue reading Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd: CA 14 Jul 2004
The appellants were teachers in Christian schools who said that the blanket ban on corporal punishment interfered with their religious freedom. They saw moderate physical discipline as an essential part of educating children in a Christian manner. Held: The appeal was dismissed. For Article 9 to be engaged (aside from certain other threshold conditions) the … Continue reading Regina v Secretary of State for Education and Employment and others ex parte Williamson and others: HL 24 Feb 2005
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act could become criminal. The prosecutor appealed the decision of … Continue reading Regina v Johnstone: HL 22 May 2003
Taxpayer companies challenged the way that the revenue restricted claims for group Corporation Tax relief for subsidiary companies in Europe. The issue was awaiting a decision of the European Court. The Revenue said that the claims now being made by other companies should proceed through the Commissioners who could implement European law directly. The taxpayers … Continue reading Autologic Holdings Plc and others v Commissioners of Inland Revenue: HL 28 Jul 2005
Sympathetic construction of national legislation LMA OVIEDO sought a declaration that the contracts setting up Commercial International were void (a nullity) since they had been drawn up in order to defraud creditors. Commercial International relied on an EC Directive designed to protect companies and third parties from the adverse effects of the doctrine of nullity. … Continue reading Marleasing SA v La Comercial Internacional de Alimentacion SA: ECJ 13 Nov 1990
The claimant contended for a common law remedy covering the same ground as the statutory right available to him under the Employment Rights Act 1996 through the Employment Tribunal system. Held: The statutory system for compensation for unfair dismissal is a complete system, and was intended to replace any common law action for damages arising … Continue reading Johnson v Unisys Ltd: HL 23 Mar 2001
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
