The parties had several years ago compromised an action for trade mark infringement on the basis that the defendant would not use the Apple logo in association with areas of commercial activity, including the sale of ‘work whose principal content is music’. The claimants said that the iTunes service for downloading music fom the internet was in breach.
Held: The claim failed. The contract had to be construed in its proper context as regards the development of technology. The agreement had impliedly anticipated use of the logo by the defendant in systems for the delivery of material. ‘I have to consider whether the mark is used to suggest a relevant trade connection with the recorded work, and even if it does then whether it is still permitted if the mark is used in connection with the download service and is a reasonable and fair use which does not go unreasonably and unfairly beyond it. ‘ The use of the logo was not a use suggesting any connection with the creation of the material transmitted.
Judges:
Mann J
Citations:
[2006] EWHC 996 (Ch)
Links:
Jurisdiction:
England and Wales
Citing:
Cited – Regina v Johnstone HL 22-May-2003
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 . .
Cited – Aristoc Ltd v Rysta Ltd HL 1945
The House had to consider changes between the two Acts, and in particular the meaning of the phrase ‘in connection with’, and what sort of trade was relevant for the purposes of what the mark indicated, under the 1938 Act.
Held: The . .
Cited – Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – Euromarket Designs Inc v Peters and Trade and Barrel Ltd ChD 25-Jul-2000
The court considered the nature of use in relation to goods under the 1994 Act, and the Directive: ‘It may well be that the concept of ‘use in relation to goods’ is different for differing purposes. Much may turn on the public conception of the use. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Contract
Updated: 29 September 2022; Ref: scu.241548