Category: Intellectual Property

Senior (Trade Mark: Opposition): IPO 6 Jan 1998

The opponents opposition was based on their use of the terms PLUS, JUNIOR and SENIOR to differentiate variations of software products and they in fact used the mark CHECKBOOK SENIOR on a modest scale from 1994 up to the date of the applicant’s application in March 1995. They also claimed use of the term by two other software houses but the evidence filed to support such claims was, at best, inconclusive. The applicants claimed their mark SENIOR had been in use from 1986 onwards.
Under Section 3 the Hearing Officer concluded that the mark failed to qualify for registration in the prima facie but taking into account the applicants extensive use he concluded that the mark was distinctive in relation to a range of computer software in Class 9 (and associated goods in Class 16) and that the application could proceed in respect of such goods.
Under Section 5(4)(a) – Passing Off – the Hearing Officer decided that the opponents had failed to present an arguable case under this head and, on the basis of the evidence filed, they failed on this ground. Similarly they failed under Section 6(1)(c) since they had failed to show that SENIOR was a well known mark in the context of their products.

Judges:

Mr S J Probert

Citations:

[1998] UKIntelP o02098, O/020/98

Links:

Bailii

Intellectual Property

Updated: 07 October 2022; Ref: scu.453082

Brainlab v OHIM (Brainlab) (Community Trade Mark): ECFI 25 Apr 2012

ECJ Community trade mark – Community word mark BrainLAB – Failure to apply for renewal of the registration of the trade mark – Removal of the trade mark from the register on expiry of registration – Application for restitutio in integrum – Article 81 of Regulation (EC) No 207/2009

Judges:

N.J. Forwood P

Citations:

T-326/11, [2012] EUECJ T-326/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 81

European, Intellectual Property

Updated: 07 October 2022; Ref: scu.453038

El Corte Ingles v OHMI- Abril Sanchez and Ricote Saugar (Boomerang): ECFI 17 Jun 2008

ECFI Community trade mark Opposition proceedings – Application for registration of the Community figurative mark BoomerangTV – Earlier national and Community word and figurative marks BOOMERANG and Boomerang Relative grounds for refusal – No likelihood of confusion – No well-known trade mark within the meaning of Article 6bis of the Paris Convention – No damage to reputation – Failure to produce evidence before the Opposition Division of the existence of certain earlier trade marks or translations thereof Production of evidence for the first time before the Board of Appeal Article 8(1)(b) and (2)(c), Article 8(5) and Article 74(2) of Regulation EC No 40/94 Rule 16(2) and (3), Rule 17(2) and Rule 20(2) of Regulation (EC) No 2868/95.

Citations:

T-420/03, [2008] EUECJ T-420/03, [2008] ETMR 71

Links:

Bailii

Statutes:

Regulation EC No 40/94, Regulation (EC) No 2868/95

Jurisdiction:

European

Intellectual Property

Updated: 07 October 2022; Ref: scu.270308

Baird v Moule’s Patent Earth Closet Co Ltd: CA 3 Feb 1876

Where a patentee sues for infringement and then discontinues his claim against the alleged infringer and consents to the revocation of his patent, he may yet require the alleged infringer to pay a substantial proportion of his costs if he can show that this situation came about because the alleged infringer had amended his defence and counterclaim to plead a new piece of prior art.

Citations:

Unreported, 3 February 1876

Jurisdiction:

England and Wales

Cited by:

Cited – See v Scott-Paine 1933
The court granted an order allowing amendments applied for, but then to give the applicant a period of time in which to consider, in light of the amendments, whether it wished to maintain that the patent or design in suit was valid and continue with . .
Cited – Williamson v Moldline Limited and Others 1986
The purpose of a Scott-Paine order is to impose on a party attacking the validity of a patent the obligation to take reasonable steps to ensure that the full attack is put before the patentee at the earliest time. The imposition of that obligation . .
Cited – Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303, Inc ChD 12-Oct-2011
The claimant sought an order debarring the defendant from relying on any evidence to support their case at the forthcoming trial for the revocation of a patent. . .
Cited – Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303 Inc CA 8-Nov-2011
The parties had litigated the validity of a patent. . .
Cited – Edison Telephone Company v India Rubber Company 1881
. .
Cited – Ungar v Sugg 1892
Lord Esher MR discussed the costs of patent infringement litigation: ‘Well, then, the moment there is a patent case one can see it before the case is opened, or called in the list. How can we see it? We can see it by a pile of books as high as this . .
Cited – In re GEC Alsthom Limited’s Patent ChD 1996
Laddie J pointed out a number of injustices that could be produced by the making of an Earth Closet order, including: ‘i) Such an order was a disincentive to a defendant to plead his best case, particularly since prior art from all over the world . .
Cited – CIL International Ltd v Vitrashop Ltd ChD 2002
Pumfrey J held that an Earth Closet order was not incompatible with the CPR. His reason was that such an order was not incompatible with the overriding objective: ‘That being the existing state of the law prior to the Civil Procedure Rules it may be . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs

Updated: 07 October 2022; Ref: scu.448482

El Corte Ingles v OHMI Gonzalez Cabello (Mundicor) (Intellectual Property): ECJ 17 Mar 2004

ECJ Community trade mark – Opposition proceedings – Earlier word marks MUNDICOLOR – Application for Community word mark MUNDICOR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94,

Citations:

T-184/02, [2004] EUECJ T-184/02

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 07 October 2022; Ref: scu.213792

In re Lind; Industrials Finance Syndicate Ltd v Lind: CA 1915

The court considered the nature of an equitable assignment of a copyright. Phillimore LJ opined said: ‘The assignment does, however, operate as a contract to assign if and when the property comes into existence, and to use the words of [Jessel M.R.], when it come into existence, equity, treating as done that which ought to be done, fastens upon that property, and the contract to assign thus becomes a complete assignment.
This is intelligible and workable if nothing happens between the date of the assignment (construed as a contract to assign) and the date when the property comes into existence; but if in the intervening period something happens which may affect the contract, as, for instance, a statutory discharge of the assignor from all his obligations, does the contract to assign still become in due course a complete assignment?
. . If the assurance rest in contract and if by consequence the only way in which equity fastens upon the property be by the operation of the doctrine of specific performance, then the liability under the contract would be, as it seems to me, discharged by bankruptcy.
. . In order that the assignment may survive and have its effect it must give to the assignee something more than a mere right in contract, something in the nature of an estate or interest.’
Swinfen Eady LJ said: ‘an agreement to charge future property creates an immediate charge upon the property coming into existence, independently of the contract to execute some further charge, and cannot be said to rest in contract only.’
Bankes LJ said ‘that equity regarded an assignment for value of future-acquired property as containing an enforceable security as against the property assigned quite independent of the personal obligation of the assignor arising out of his imported covenant to assign’.

Judges:

Phillimore LJ, Swinfen Eady LJ, Bankes LJ

Citations:

[1915] 2 Ch 345

Jurisdiction:

England and Wales

Cited by:

Cited – B4U Network (Europe) Ltd v Performing Right Society Ltd CA 16-Oct-2013
Composers had entered an agreement with the respondent, assigning all copyrights in their works to the respondent. The respondent asserted also an equitable assignment of all future works. The appellant asserted that the rights in the particular . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Equity

Updated: 07 October 2022; Ref: scu.541518

Rehbein v OHMI – Dias Martinho (Outburst): ECFI 28 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for registration of the Community figurative mark OUTBURST – Earlier national word mark OUTBURST – Genuine use of the earlier trade mark – Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 42(2) and (3) of Regulation (EC) No 207/2009) – Production of evidence for the first time before the Board of Appeal – Article 74(2) of Regulation No 40/94 (now Article 76(2) of Regulation No 207/2009) – Rule 22(2) of Regulation (EC) No 2868/95

Judges:

Papasavvas P

Citations:

T-214/08, [2012] EUECJ T-214/08

Links:

Bailii

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452635

Kaltenbach and Voigt v OHIM (3D Exam): ECFI 29 Mar 2012

ECFI Community trade mark – International registration – Request for territorial extension of protection – Figurative mark 3D eXam – Absolute grounds for refusal – Descriptive character and lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009

Judges:

Kanninen p

Citations:

T-242/11, [2012] EUECJ T-242/11

Links:

Bailii

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452625

Omya v OHMI – Alpha Calcit (Calcimatt): ECFI 29 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark CALCIMATT-Earlier Community word mark CALCILAN – Relative grounds for refusal – Likelihood of confusion – Similarity of signs – Article 8, paragraph 1, sub b) of Regulation (EC) No. 207/2009 – Refusal to register

Judges:

Kanninen P

Citations:

T-547/10, [2012] EUECJ T-547/10

Links:

Bailii

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452630

Armani v OHMI – Del Prete (Aj Amici Junior) (French Text) ( Marque Communautaire): ECFI 27 Mar 2012

ECJ Community trade mark – Opposition proceedings – Application for the Community figurative mark AJ AMICI JUNIOR – Earlier national figurative mark AJ ARMANI JEANS – Earlier national word mark ARMANI JUNIOR – Relative ground for refusal – Article 8 (1) (b) of Regulation (EC) No 207/2009

Citations:

T-420/10, [2012] EUECJ T-420/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 06 October 2022; Ref: scu.452614

Barilla v OHMI – Brauerei Schlosser (Alixir) (Community Trade Mark): ECFI 23 Mar 2012

ECJ Community trade mark – Opposition proceedings – Application for registration of the Community word mark ALIXIR – Earlier national word mark Elixeer – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009

Citations:

T-157/10, [2012] EUECJ T-157/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 06 October 2022; Ref: scu.452615

Hipp v OHMI – Nestle (Bebio): ECFI 28 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark Bebio – Earlier Community word mark and international word mark BEBA – Partial refusal of registration – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)

Judges:

Papasavvas P

Citations:

T-41/09, [2012] EUECJ T-41/09

Links:

Bailii

Statutes:

Regulation (EC) No 40/94, Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452623

The Administrators of The Tulane Education Fund (Patent): IPO 20 Jul 2011

The applicant failed to pay the prescribed fee for bringing supplementary protection certificate SPC/GB/99/033 into effect within the prescribed period or within the period of six months following the end of the prescribed period. The applicant argued that a late payment of the fee should be allowed either as a correction of an irregularity under rule 107, a reinstatement under section 20A, or a restoration under section 28. The hearing officer found that there was no error, default or omission on the part of the Office that resulted in the failure to pay the SPC fee in time in order to bring the SPC into effect and therefore rule 107 did not give the comptroller discretion to allow the late payment. He also found that neither section 20A nor section 28 applied in the present circumstances. The SPC could not therefore be brought into effect.

Judges:

Mr B Micklewright

Citations:

[2011] UKIntelP o25211

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 06 October 2022; Ref: scu.458391

Football Association Premier League and Others v QC Leisure: ECJ 4 Oct 2011

ECJ Judgment – Satellite broadcasting – Broadcasting of football matches – Reception of the broadcast by means of satellite decoder cards – Satellite decoder cards lawfully placed on the market in one Member State and used in another Member State – Prohibition on marketing and use in a Member State – Visualisation of broadcasts in disregard of the exclusive rights granted – Copyright – Television broadcasting right – Exclusive licences to broadcast in a single Member State – Freedom to provide services – Article 56 TFEU – Competition – Article 101 TFEU – Restriction of competition by object – Protection of services based on conditional access – Illicit device – Directive 98/84/EC – Directive 2001/29/EC – Reproduction of works within the memory of a satellite decoder and on a television screen – Exception to the reproduction right – Communication of works to the public in public houses – Directive 93/83/EEC)

Citations:

C-403/08, [2012] FSR 1, [2012] 1 CMLR 29, [2011] EUECJ C-403/08 – O

Links:

Bailii

Statutes:

Directive 93/83/EEC, Directive 98/84/EC, Directive 2001/29/EC

Citing:

Order – Football Association Premier League and Others v QC Leisure ECJ 16-Dec-2009
ECJ (Order) REFERENCES for a preliminary ruling under Article 234 EC from the High Court of Justice of England and Wales, Chancery Division, and the High Court of Justice of England and Wales, Queen’s Bench . .
See Also – Football Association Premier League and Others v QC Leisure ECJ 3-Feb-2011
ECJ Advocate General’s Opinion – Satellite transmission of football matches – Marketing of decoder cards which have been lawfully placed on the market in other Member States – Directive 98/84/EC – Legal . .
See Also – Football Association Premier League Ltd and others v QC Leisure and others ChD 24-Jun-2008
Three actions were heard in which the claimants alleged copyright infringement in the use of decoder cards to broadcast foreign transmissions of live Premier League football matches. . .

Cited by:

See Also – Football Association Premier League Ltd and Others v QC Leisure and Others ChD 3-Feb-2012
The claimant complained that in using decoders imported from Greece, the defendants had infringed their copyrights. . .
Cited – Federation Against Copyright Theft Ltd v Ashton Admn 7-Jun-2013
The Federation appealed against a decision rejecting its complaint against the defendant of having committed offences under the 1988 Act. He ran a social club, and was accused of showing material taken via a contract with Virgin for private showing, . .
Cited – Federation Against Copyright Theft Ltd v Ashton Admn 7-Jun-2013
The Federation appealed against a decision rejecting its complaint against the defendant of having committed offences under the 1988 Act. He ran a social club, and was accused of showing material taken via a contract with Virgin for private showing, . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452398

Seaton and Others v Seddon: ChD 23 Mar 2012

The claimants sought damages alleging that royalties were due to them. The defendant solicitors applied to strike out the action as against themselves as an abuse of process.

Judges:

Roth J

Citations:

[2012] EWHC 735 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Mortgage Express v Abensons Solicitors (A Firm) ChD 20-Apr-2012
The claimant lender sought damages against the defendant solicitors alleging negligence and breach of fiduciary duty by them in acting for them on mortgage advances. The defendants now argued that the allowance of an amendment to add the allegation . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Negligence

Updated: 06 October 2022; Ref: scu.452303

Volkswagen v OHMI – Suzuki Motor (Swift Gti): ECFI 21 Mar 2012

ECFI (French Text) Community trade mark – Opposition proceedings – Application for Community word mark SWIFT GTi – Brands International and national previous GTI – Relative grounds for refusal – Similarity of goods – Article 8, paragraph 1, sub b) of Regulation (EC) No 40/94 [now Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009] – Assessment of likelihood of confusion – Opposition rejected

Judges:

Forwood P

Citations:

T-63/09, [2012] EUECJ T-63/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 06 October 2022; Ref: scu.452250

Comic Enterprises Ltd v Twentieth Century Fox Film Corp: PCC 22 Mar 2012

Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions that her client should stay in the PCC. Mr Malynicz submitted it was in effect just another factor to be weighed up like all the others. (I should note he does not accept the evidence on the point but I will deal with that below.) On the issue of principle, in my judgment Mr Malynicz is wrong. The Patents County Court has a specific role to improve access to justice for smaller and medium sized enterprises in the area of intellectual property. I described access to justice for small and medium sized enterprises as a ‘decisive factor’ in Alk-Abello (paragraph 55) and I stand by that observation.
However cases in which an SME seeks to sue a large defendant were always obviously going to present particular problems for a specialist court for small and medium sized enterprises in intellectual property matters. The fact that an IP right is held by a small claimant does not mean that the defendant will conveniently be a small enterprise as well. In the past small claimants were concerned that they could not afford to fight in the High Court and, more importantly, could not afford to lose. The costs order would bankrupt the company. The PCC’s cost capping system deals with this problem and caps the claimant’s downside costs risk at pounds 50,000. That is one of the ways in which the PCC facilitates access to justice.
Many smaller business people perceive that their intellectual property has been stolen by large corporations. Hitherto there was little they felt they could do about it. The PCC is by no means intended to be a panacea but it is intended to be a forum to facilitate access to justice for smaller IP rights holders and for that matter smaller organisations accused of infringing IP rights as well.
So what is the court to do when faced with a small claimant suing a large defendant? One thing is plain. As I have said already each case depends on its facts. A small claimant does not have an unfettered right to stay in the PCC regardless of the nature of the case any more than a large defendant has an unfettered right to demand that it be sued in the High Court.’
. . And ‘I remind myself that the ultimate objective of an order for transfer is to do justice between the parties. The argument that the case should remain in the Patents County Court is a powerful one. Access to justice for SMEs is capable of being a decisive factor having regard to the purposes for which the Patents County Court was set up. The claimant in this case would be severely affected by an adverse costs order in the High Court. However set against that is the nature of this case itself and its value.’

Judges:

Birss QC HHJ

Citations:

[2012] EWPCC 13

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Explained – Alk-Abello Ltd v Meridian Medical Technologies Dey Pharma Lp PCC 9-Nov-2010
The court was asked whether the case should be transferred from the Patents County Court to the High Court Patents Court.
Birss HHJ identified the relevant factors: ‘the points to consider are:-
i) the financial position of the parties . .

Cited by:

See Also – Comic Enterprises Ltd v Twentieth Century Fox Film Corp ChD 7-Feb-2014
Action for infringement of United Kingdom registered trade mark . .
See Also – Comic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 8-Feb-2016
The proceedings concern a dispute about the right to use the word ‘glee’ as the name for a TV drama series. . .
See Also – Comic Enterprises Ltd v Twentieth Century Fox Film Corporation CA 25-May-2016
The court was asked as to the validity of certain trade marks. . .
Cited – 77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
Cited – Environmental Recycling Technologies PatC 2012
Warren J discussed the importance of the financial health of the parties to a case when considering a transfer to the Chancery Division, and referring to Comic Enterprises said: ‘Ms. Lawrence submits that the financial position of the parties is . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 October 2022; Ref: scu.452262

Football Dataco And Others v Yahoo UK Ltd etc: ECJ 1 Mar 2012

ECJ Directive 96/9/EC – Legal protection of databases – Copyright – Football league fixture lists

Judges:

Lenaerts R

Citations:

C-604/10, [2012] EUECJ C-604/10

Links:

Bailii

Statutes:

Directive 96/9/EC

Citing:

Opinion – Football Dataco And Others v Yahoo UK Ltd etc ECJ 15-Dec-2011
ECJ Opinion of Advocate General Mengozzi – Directive 96/9/EC – Legal protection of databases – Football league fixture lists – Copyright
No copyright subsisted in databases set up according to technical . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 05 October 2022; Ref: scu.451789

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

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.

Judges:

The Honourable Mr Justice Jacob

Citations:

[2003] EWHC 1382 (Ch)

Links:

Bailii

Statutes:

Trade Marks Directive (89/104) 10(1) 12(1)

Jurisdiction:

England and Wales

Citing:

Cited – Ansul (Judgment) ECJ 11-Mar-2003
Europa Trade marks – Directive 89/104/EEC – Article 12(1) – Revocation of trade mark owner’s rights – Concept of genuine use of a trade mark – Maintenance of goods already sold and sales of replacement parts and . .
See Also – UK Registered 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 19-Dec-2001
The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the . .

Cited by:

Cited – Future Publishing Ltd v The Edge Interactive Media Inc and Others ChD 13-Jun-2011
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 October 2022; Ref: scu.183767

UK Registered 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 19 Dec 2001

The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the holder to demonstrate use. One claim was for medical use, but the product had not been licensed for such, and the registrar had deemed it unused. What amount and kind of use will suffice to prove that a mark has been put to genuine use within the meaning of the Article? Provided there is nothing artificial about a transaction under a mark, then it will amount to ‘genuine’ use. There is no minimum. Remaining questions were to be referred to the European Court for interpretation of the Article.

Judges:

Justice Jacob

Citations:

[2001] EWHC 492 (Ch)

Links:

Bailii

Statutes:

Trade Marks Directive 89/104/EEC (1989 OJ No L40/5) Art 10, Trade Marks Act 1994 46(1)

Jurisdiction:

England and Wales

Cited by:

See Also – 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
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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 05 October 2022; Ref: scu.167213

Nichols Plc v Trade Mark Application No 2,241,892: ChD 23 Jul 2002

Judges:

The Hon Mr Justice Jacob

Citations:

[2002] EWHC 1424 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Referred to – Nichols plc v Registrar of Trade Marks ECJ 16-Sep-2004
The applicant sought to register the name ‘Nichols’ as a trade mark for food and drink vending machines. The application was rejected as being common. The registrar had checked in the London telephone directory and discovered that the name appeared . .

Cited by:

Reference from – Nichols plc v Registrar of Trade Marks ECJ 16-Sep-2004
The applicant sought to register the name ‘Nichols’ as a trade mark for food and drink vending machines. The application was rejected as being common. The registrar had checked in the London telephone directory and discovered that the name appeared . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 October 2022; Ref: scu.174342

Azienda Agricola Colsaliz Di Faganello Antonio v OHMI – Weinkellerei Lenz Moser (Servo Suo): ECFI 29 Feb 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark SERVO OUA – Earlier Community word mark SERVUS – Relative grounds for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b) of Regulation (EC) No. 207 / 2009

Judges:

Pelikanova P

Citations:

T-525/10, [2012] EUECJ T-525/10

Links:

Bailii

Statutes:

Regulation (EC) 207/2009

European, Intellectual Property

Updated: 05 October 2022; Ref: scu.451783

Omegameter (Trade Mark: Opposition): IPO 26 Nov 2008

IPO Section 5(2)(b): Opposition successful – Estoppal: interpretation of agreements. – The applicants did not dispute that their class 14 specification would result in a likelihood of confusion but claimed that the opponents were estopped from opposition by reason of a pre-existing agreement between the parties. (The agreement had featured in a previous dispute between the parties – see Omega SA v Omega Engineering Ltd [2002] EWHA 2620 (Ch)).
Having examined the matter the Hearing Officer concluded that the opponents were not estopped by reason of the agreement and the opposition to the class 14 specification succeeded accordingly.

Judges:

Mr D Landau

Citations:

[2008] UKIntelP o31308

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 October 2022; Ref: scu.457205

Time Machine Series of 2 Time Machine (Trade Mark: Revocation): IPO 26 Nov 2008

Section 46(1)(b). Appeal to the Appointed Person. Award of costs – Award of costs to the registered proprietor. See Hearing Officer’s decision dated 8 April 2008 (BL O/100/08).
See Appointed Person’s decision dated 10 November 08(BL O/306/08)
In her decision dated 10 November 2008 (BL O/306/08) the Appointed Person rejected the appeal against the Hearing Officer’s decision of 8 April 2008 (BL O/100/08). She allowed the parties to make written submissions as to the award of costs.
The Appointed Person decided that an appropriate scale award would be andpound;2,100 but she abated this sum by andpound;500 as the applicant had had some measure of success with its appeal. The sum of andpound;1,600 therefore, awarded to the registered proprietor, together with the sum of andpound;2,000 awarded by the Hearing Officer.

Judges:

Ms A Michaels

Citations:

[2008] UKIntelP o31608

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property, Costs

Updated: 05 October 2022; Ref: scu.457210

Beertech UK Limited, Jolley, Comerford and Patel (Patent): IPO 26 Nov 2008

IPO An uncontested application was filed by Beertech UK Limited originally under section 13(1) of the Patents Act 1977 though the application was subsequently taken as filed under rule 10(2) of the Patent Rules 2007. An uncontested application was also filed by Beertech UK Limited under section 13(3). It was found that Narendra Patel should be mentioned as sole inventor in relation to the published patent application and granted patent for the invention. The decision serves as a certificate, issued in accordance with section 13(3), to the effect that Dennis James Jolley and Irene Margaret Comerford should not have been mentioned as inventors in the published patent application and granted patent for the invention.

Judges:

Mrs S Williams

Citations:

[2008] UKIntelP o31408, O/314/08

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 05 October 2022; Ref: scu.457197

Certmedica International v OHMI – Lehning Entreprise (L112): ECFI 29 Feb 2012

ECFI Community trade mark – Invalidity proceedings – Community word mark L112 – Earlier French word mark L.114 – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 – No genuine use of the earlier mark – Article 57(2) and (3) of Regulation No 207/2009 – Declaration of partial invalidity

Judges:

Pelikanova P

Citations:

T-77/10, [2012] EUECJ T-77/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 05 October 2022; Ref: scu.451784

Fred Perry (Holdings) Ltd v Brands Plaza Trading Ltd and Another: CA 1 Feb 2012

Lewison LJ cited with approval paragraph 6.5 of the Jackson report, which said: ‘courts at all levels have become too tolerant of delays and non-compliance with orders. In so doing they have lost sight of the damage which the culture of delay and non-compliance is inflicting on the civil justice system. The balance therefore needs to be redressed.’

Judges:

Maurice Kay VP, Jackson, Lewison LJJ

Citations:

[2012] FSR 28, [2012] 6 Costs LR 1007, [2012] EWCA Civ 224

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Venulum Property Investments Ltd v Space Architecture Ltd and Others TCC 22-May-2013
The claimant sought an extension of time to serve the Particulars of Claim. The solicitors said that they had misread the relevant Rules.
Held: The solicitors had acted on the basis of the former practice, but the rules had been substantially . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 05 October 2022; Ref: scu.451736

Coverpla v OHMI – Heinz-Glas (Flacon): ECFI 9 Mar 2012

ECFI Community design – Invalidity proceedings – Community design registered representative a bottle – prior design – Reason of invalidity – Disclosure of prior design – Lack of novelty – Articles 5 and 25, paragraph 1, b) of Regulation (EC) No 6/2002

Judges:

Azizi P

Citations:

T-450/08, [2012] EUECJ T-450/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 October 2022; Ref: scu.452117

Eyesense v OHMI – Osypka Medical (Isense): ECFI 9 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for Community word mark ISENSE – Earlier national word mark EyeSense – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8, paragraph 1, sub b) of Regulation (EC) No. 207/2009

Judges:

Azizi P

Citations:

T-207/11, [2012] EUECJ T-207/11

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 October 2022; Ref: scu.452119

Cortes Del Valle Lopez v OHIM (Ique Buenu Ye! Hijoputa): ECFI 9 Mar 2012

ECFI Community trade mark – Application for Community figurative mark iQue buenu ye! HIJOPUTA – Absolute ground for refusal – Brand contrary to public order or morality – Article 7, paragraph 1, sub f) of Regulation (EC) No 207/2009

Citations:

T-417/10, [2012] EUECJ T-417/10

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 October 2022; Ref: scu.452116

Thyssenkrupp Steel Europe v OHIM (Highprotect): ECFI 6 Mar 2012

ECFI Community trade mark – Application for Community word mark Highprotect – Absolute grounds for refusal – Descriptive character – Article 7, paragraph 1, sub c) of Regulation (EC) No 207/2009

Citations:

T-565/10, [2012] EUECJ T-565/10

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 October 2022; Ref: scu.452128

Ella Valley Vineyards v OHMI – HFP (Ella Valley Vineyards): ECFI 9 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark ELLA VALLEY VINEYARDS – Earlier national and Community trade marks ELLE – Relative ground for refusal – Likelihood of association – Link between the signs – Reputation – No similarity of the signs – Article 8(5) of Regulation (EC) No 207/2009

Citations:

T-32/10, [2012] EUECJ T-32/10

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 8(5)

Jurisdiction:

European

Intellectual Property

Updated: 05 October 2022; Ref: scu.452118

Arrieta D Gross v OHMI – International Biocentric Foundation And Others (Biodanza): ECFI 8 Mar 2012

ECFI Community trade mark – Opposition proceedings – Application for the Community figurative mark BIODANZA – Earlier national word mark BIODANZA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Death of the trade mark applicant before adoption of the decision of the Board of Appeal – Admissibility of the response – Absence of genuine use of the earlier trade mark – Article 42(2) and (3) of Regulation No 207/2009 – Proceedings before the Board of Appeal – Rights of defence – Article 75 of Regulation No 207/2009

Citations:

T-298/10, [2012] EUECJ T-298/10

Links:

Bailii

Statutes:

Regulation No 207/2009 75

European, Intellectual Property

Updated: 05 October 2022; Ref: scu.452112

Skytron Energy v OHIM (Arraybox): ECFI 2 Feb 2012

ECFI Community trade mark – Application for Community word mark arraybox – Absolute ground for refusal – Descriptive character – Lack of distinctive character – Article 7, paragraph 1, sub b) and c) of Regulation (EC) No 207/2009.

Judges:

Dittrich P

Citations:

T-321/09, [2012] EUECJ T-321/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 October 2022; Ref: scu.451198

Run2Day Franchise v OHMI – Runners Point (Run2): ECFI 7 Feb 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark run2 – Earlier Community word and figurative previous RUN2DAY – Benelux earlier figurative mark RUN2DATE – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009

Judges:

Pelikanova R P

Citations:

T-64/11, [2012] EUECJ T-64/11

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 04 October 2022; Ref: scu.451197

Frisdranken Industrie Winters v Red Bull Gmbh: ECJ 15 Dec 2011

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

Citing:

See Also – Frisdranken Industrie Winters v Red Bull Gmbh ECJ 14-Apr-2011
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 – . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 04 October 2022; Ref: scu.451202

Tilda Riceland Private v OHMI – Siam Grains (Basmali): ECFI 18 Jan 2012

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark BASmALI – Earlier non-registered trade mark and earlier sign BASMATI – Relative ground for refusal – Article 8(4) of Regulation (EC) No 40/94 (now Article 8(4) of Regulation (EC) No 207/2009)

Citations:

T-304/09, [2012] EUECJ T-304/09

Links:

Bailii

European, Intellectual Property

Updated: 04 October 2022; Ref: scu.451181

Dosenbach-Ochsner v OHMI – Sisma (Representation D’Elephants Dans Un Rectangle): ECFI 7 Feb 2012

ECFI Community trade mark – Invalidity proceedings – Community figurative mark representing elephants in a rectangle – Earlier international and national figurative marks representing an elephant and earlier national word mark elefanten – Relative ground of refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 – Distinctive character of the earlier marks

Judges:

Pelikanova P R

Citations:

T-424/10, [2012] EUECJ T-424/10

Links:

Bailii

European, Intellectual Property

Updated: 04 October 2022; Ref: scu.451189