The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a finding of fact contrary to the original court, and had therefore acted in excess of jurisdiction, and had refused to enforce it.
Held: The true characterisation of the judgement of the European Court was that it had not depended upon the finding of fact referred to. The issue at the heart of the judgment was whether the registration rights would be affected by use of the mark by a third party. The sale by the defendant of goods bearing the claimant’s marks carried the same inference as to origin of those sold by the club. Appeal allowed. The policy conern is that ‘Unchecked use of the mark by a third party, which is not descriptive use, is likely to damage the function of the trade mark right because the registered trade mark can no longer guarantee origin, that being an essential function of a trade mark.’
Judges:
Lord Justice Aldous Lord Justice Clarke Lord Justice Jonathan Parker
Citations:
[2003] RPC 710, [2003] EWCA Civ 696, [2003] RPC 39
Links:
Jurisdiction:
England and Wales
Citing:
Appeal from – Arsenal Football Club plc v Reed ChD 12-Dec-2002
The Club had claimed trade mark infringement against the defendant who sold Arsenal memorabilia, but claimed that the use was not a trade mark use. The case was referred to the European Court of Justice who decided in favour of the club, who then . .
Cited by:
Cited – Linkin Park TMR 3-Aug-2004
The applicant sought registration of the mark ‘Linkin Park’ under the classifications including posters. The name had been used by a music band, and objection was made, saying it would jeopardise the guarantee of origin associated with the name.
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
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 . .
Cited – D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas Chd 25-Jan-2008
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an . .
Cited – 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 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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 07 June 2022; Ref: scu.182359