ECFI Community trade mark – Opposition proceedings – Application for Community word mark SPA GROUP – Earlier national figurative marks SPAR – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8, paragraph 1, sub b), Regulation No. 207/2009
Forwood P
T-378/09, [2012] EUECJ T-378/09
Updated: 04 October 2022; Ref: scu.451178
The claimants had an established goodwill trading under the name ‘Firecraft’ and sought to restrain the defendant selling their own fire under the same name. It had earlier been held that the ‘Firecraft’ mark was invalidly registered.
Held: The claimant’s request for summary judgment was granted.
[2009] EWHC 2784 (Ch), [2010] RPC 15, [2010] ETMR 29
England and Wales
Updated: 04 October 2022; Ref: scu.377847
The Honourable Mr Justice Laddie
[2003] EWHC 1877 (Ch)
England and Wales
Updated: 04 October 2022; Ref: scu.184858
Declaration as to non-infringement of patent
The Hon Mr Justice Laddie
[2004] EWHC 474 (Ch)
England and Wales
Updated: 04 October 2022; Ref: scu.194578
The Hon Mr Justice Laddie
[2004] EWHC 1124 (Patents)
England and Wales
Appeal from – Celltech R and D Limited v Medimmune Inc CA 21-Oct-2004
Patent licence . .
Appeal from – Celltech R and D Limited v Medimmune Inc CA 21-Oct-2004
Patent licence . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.197737
The claimant asserted trade mark rights in the shape of its Viennetta ice cream.
Held: ‘There is another, quite different, reason why I do not regard the shape alone as having been established as a trade mark. It is not sufficiently distinctive. I revert back to the fact that 15% thought that one or more ice cream products were Viennetta. A trade mark must, in principle, be a unique identifier – denoting one trader and none other. If it is shown that it mainly so acts but also denotes, or may denote, others to a lesser but nonetheless substantial degree, then I think: – It is not capable of distinguishing Art 3(1)(a) – It is ‘devoid of distinctive character’ Art 3(1)(b) – It has ‘not acquired a distinctive character’.
The Hon Mr Justice Jacob
[2002] EWHC 2709 (Ch)
England and Wales
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.178556
The claimant sought damages for patent infringement. The respondent asserted that the refusal to licence the patent amounted to an abuse of its dominant position. Complaint had also been brought in the US.
Held: The licence offered by Intel would distort the market. The refusal to licence on other terms prevented other companies even getting a foothold in the market. However the refusal to licence an intellectual property is a right in the owner save when it is an abuse, and even then the defence is only available exceptionally. The defendant had not made out the conditions precedent. Summary judgement for the claimant.
Mr Justice Lawrence Collins
[2002] EWHC 1159 (Ch)
England and Wales
Cited – Sel-Imperial Ltd v The British Standards Institution ChD 23-Apr-2010
The defendant had developed a draft standard for automotive body repairs. It included a requirement that any replacement parts must be either the manufacturer’s own or certified under a recognised conformity certification scheme. The claimant . .
Appeal from – Intel Corporation v Via Technologies Inc, Elitegroup Computer Systems (UK) Ltd Via Technologies Inc , Via Technologies (Europe) Ltd, Realtime Distribution Ltd CA 20-Dec-2002
Infringement of patents.
Held: With regard in particular to competition law claims (or defences), where the area of law is in the course of development the court should be cautious ‘to assume that it is beyond argument with real prospect of . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.175275
ECFI Community trade mark – Application for the Community figurative mark ‘justing’ – Earlier national figurative mark JUSTING – Seniority of the earlier national mark claimed – Signs not identical – Article 34 of
Papasavvas P
T-103/11, [2012] EUECJ T-103/11
Updated: 04 October 2022; Ref: scu.451176
(Community Trade Mark)
T-522/10, [2012] EUECJ T-522/10
European
Updated: 04 October 2022; Ref: scu.451171
ECFI Community trade mark – Opposition proceedings – Application for Community word mark VISUAL MAP – Earlier national word mark VISUAL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)
Forwood P
T-260/08, [2012] EUECJ T-260/08
Updated: 04 October 2022; Ref: scu.451172
ECJ Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 58 – Regulation (EC) No 2868/95 – Rules 49 and 50 – Word mark R10 – Opposition – Assignment – Admissibility of an appeal – Concept of ‘person entitled to appeal’ – Applicability of the OHIM Guidelines
J.N. Cunha Rodrigues, P
C-53/11, [2012] EUECJ C-53/11 – P
Regulation (EC) No 40/94 58, Regulation (EC) No 2868/95 49
Updated: 04 October 2022; Ref: scu.451175
ECFI Community trade mark – Opposition proceedings – Application for Community word mark LA VICTORIA DE MEXICO – Earlier Community figurative mark containing the verbal element ‘victoria’ and earlier national word mark VICTORIA – Partial refusal of registration – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009
Forwood P
T-205/10, [2012] EUECJ T-205/10
Updated: 04 October 2022; Ref: scu.451170
[2011] EWHC 3288 (Pat)
Updated: 04 October 2022; Ref: scu.451154
[2011] EWHC 3461 (Pat)
Updated: 04 October 2022; Ref: scu.451153
[2011] EWHC 3604 (Pat)
England and Wales
Updated: 04 October 2022; Ref: scu.451151
[2012] EWHC 181 (Pat)
Updated: 04 October 2022; Ref: scu.451149
Floyd J
[2011] EWHC 2977 (Pat), [2012] ECDR 5
See Also – ITV Broadcasting Ltd and Others v TV Catchup Ltd PatC 18-Jul-2011
. .
Reference – ITV Studios Ltd v TVCatchup Ltd ECJ 7-Mar-2013
ECJ Directive 2001/29/EC – Article 3(1) – Broadcasting by a third party over the internet of signals of commercial television broadcasters – ‘Live streaming’ – Communication to the public . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.451152
[2011] EWHC 3311 (Pat)
Updated: 04 October 2022; Ref: scu.451157
[2011] EWHC 3492 (Pat)
Updated: 04 October 2022; Ref: scu.451158
[2011] EWHC 3393 (Pat)
Updated: 04 October 2022; Ref: scu.451156
ECFI Community trade mark – Opposition proceedings – Application for Community word META – Earlier Community figurative mark METAFORM – Relative grounds for refusal – Similarity of goods and signs – Refusal of registration – Article 8, paragraph 1, sub b) of Regulation (EC) No 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009] – Likelihood of confusion
T-1/09, [2011] EUECJ T-1/09
European
Updated: 04 October 2022; Ref: scu.444616
The claimant alleged that the proposal for a game show submitted by him had been used by the various defendants. He alleged breaches of copyright and of confidence. Application was now made to strike out the claim.
Arnold J
[2010] EWHC 2065 (Ch)
England and Wales
Cited – JD Wetherspoon Plc v Van De Berg and Co Ltd and others ChD 4-May-2007
Lewison J summarised the approach to be taken by courts hearing an application by defendants to strike out claims: ‘Both the application to strike out and the application for summary judgment are summary applications. The application for summary . .
Cited – Green v Broadcasting Corporation of New Zealand PC 18-Jul-1989
Format of TV show not copyrightable
Court of Appeal of New Zealand – The plaintiff had developed the program ‘Opportunity Knocks’ on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand, and also in passing off. . .
Cited – Swain v Hillman CA 21-Oct-1999
Strike out – Realistic Not Fanciful Chance Needed
The proper test for whether an action should be struck out under the new Rules was whether it had a realistic as opposed to a fanciful prospect of success. There was no justification for further attempts to explain the meaning of what are clear . .
Cited – Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
Cited – The Royal Brompton Hospital National Health Service Trust v Hammond and Others (No 5) CA 11-Apr-2001
When looking at an application to strike out a claim, the normal ‘balance of probabilities’ standard of proof did not apply. It was the court’s task to assess whether, even if supplemented by evidence at trial, the claimant’s claim was bound to fail . .
Cited – Doncaster Pharmaceuticals Group Ltd and Others v The Bolton Pharmaceutical Company 100 Ltd CA 26-May-2006
Appeals were made against interlocutory injunctions for alleged trade mark infringement.
Held: The court should hesitate about making a final decision for summary judgment without a trial, even where there is no obvious conflict of fact at the . .
Cited – E D and F Man Liquid Products Ltd v Patel and Another CA 4-Apr-2003
The rules contained two occasions on which a court would consider dismissal of a claim as having ‘no real prospect’ of success.
Held: The only significant difference between CPR 24.2 and 13.3(1), is that under the first the overall burden of . .
Cited – Infopaq International v Danske Dagblades Forening ECJ 12-Feb-2009
ECJ (Opinion) Directive 2001/29 – Articles 2 and 5 – Harmonisation of certain aspects of copyright and related rights in the information society – Reproduction right – Exceptions and limitations – Temporary acts . .
Cited – Baigent and Another v The Random House Group Ltd CA 28-Mar-2007
The claimants appealed against a decision that the defendant’s book, the Da Vinci Code, had not infringed their copyright. The judge had found some copying, but not so much that a substantial part had been copied.
Held: Mummery LJ said: ‘In . .
Cited – Nova Productions Ltd v Mazooma Games Ltd and others CA 14-Mar-2007
The defendant appealed against a finding of copyright infringement in a computer game.
Held: The appeal failed. The court must identify the artistic work relied upon and then decide whether it has been reproduced by copying of the work as a . .
Cited – T, Regina (on The Application of) v Chief Constable of Greater Manchester and Others CA 29-Jan-2013
Three claimants appealed against refusal of declarations that the response of the police to requests for Criminal Records Bureau enhanced checks, were a disproportionate interference in their right to private and family life, and in particular that . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.423148
The plaintiff owned, ran and promoted a chain of hotels in the USA and elsewhere, but not including any hotel in the UK. Bookings for rooms in their hotels were frequently made from the UK, through an office which the plaintiff maintained in London or via travel agencies. The defendant was a company set up in this country which intended to establish hotels here, though with none in being at the time and none in prospect for some time to come.
Held: On a motion to restrain passing off, the judge granted an interim injunction. He looked ahead to the position as it might be at trial, envisaging that the plaintiff might be able to show that it had a reputation and goodwill which would be exposed to risk from confusion between their business and that of the defendant, even though they were carrying on business in different parts of the world. He did not place specific reliance on the fact of direct bookings or on the plaintiff having an office in this country.
Buckley J
[1964] RPC 202
England and Wales
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.401813
The claimants alleged patent infringement. The defendants denied infringement but also sought the revocation of the three patents for Electronic Programming Guides, involving the transfer of data from one computer disc to another.
Held: The invention had to have a physical effect outside the computer system.
Mann J
[2009] EWHC 3068 (Ch), [2010] RPC 10
England and Wales
Updated: 04 October 2022; Ref: scu.381525
The plaintiff, which carried on a retail shoe franchising business mainly in the United States, had prospective franchisee in England but had not commenced trading there. There was an awareness in England of the plaintiff’s trade name and activities in the USA, but no more than preparatory steps had been taken to set up a business here.
Held: That was not an adequate basis for a passing-off claim. No one in England had bought anything from one of the plaintiff’s franchised shops abroad. The plaintiff’s US advertisements reached England, but there was no solicitation by way of postal trade.
Walton J said: ‘as a matter of principle, no trader can complain of passing off as against him in any territory – and it will usually be defined by national boundaries, although it is well conceivable in the modern world that it will not – in which he has no customers, nobody who is in a trade relation with him. This will normally shortly be expressed by saying that he does not carry on any trade in that particular country . . but the inwardness of it will be that he has no customers in that country: no people who buy his goods or make use of his services (as the case may be) there.’
Walton J
[1980] RPC 343
England and Wales
Cited – Commissioners of Inland Revenue v Muller and Co Margarine HL 1901
The House considered the liability, or not, to stamp duty of an agreement made in the UK. Under the Stamp Act 1891 an agreement made in the UK for the sale of any estate or interest in any property except lands or property locally situate out of the . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
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 . .
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.401811
ECJ Community trade mark – Opposition proceedings – Application for Community word mark LA BARONNIE – Earlier national word mark BARONIA – Proof of use of earlier mark – Evidence produced for the first time before the Board of Appeal – Admissibility – Scope of the examination conducted by the Boards of Appeal – Articles 62 and 74 of Regulation (EC) No 40/94
T-323/03, [2006] EUECJ T-323/03
European
Updated: 04 October 2022; Ref: scu.243090
Passing Off claim.
Laddie J
[2003] EWHC 1256 (Ch)
England and Wales
Updated: 04 October 2022; Ref: scu.252486
Application to strike out patent infringement action.
[2003] EWHC 3123 (Ch)
England and Wales
See Also – Ablaise Ltd v Nettec Plc and Another 3121 ChD 30-Oct-2003
Application for security for costs. . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.227072
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be read as extending to goods or services which are identical with or similar to those covered by the registered mark. The Officer had found that in this situation, confusion was unlikely since consumers would be likely to select their service after close scrutiny – it was not a ‘bag of sweets’ case. The decision stood.
The Honourable Mr Justice Peter Smith
[2004] EWHC 1623 (Ch)
Trade Marks Act 1994, Council Directive 89/104/EEC 4(4)(a)
England and Wales
Cited – Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
Cited – Bessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
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 . .
Applied – E I Du Pont De Nemours and Company v S T Dupont; Du Pont Trade Mark CA 10-Oct-2003
The court considered the circumstances under which a Hearing Officer’s decision could be reversed on appeal: ‘Those experienced in cases such as these, such as the Hearing Officer, would have known that the sort of evidence normally adduced on . .
Cited – Davidoff et Cle SA and Another v Gofkid Ltd ECJ 9-Jan-2003
The claimant distributed cosmetics and other goods in Germany under the mark ‘Davidoff’, and the defendants used a similar registered mark for their own and similar goods. They sought protection under the directive.
Held: The directive . .
Cited – Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Cobbold v London Borough of Greenwich CA 9-Aug-1999
The tenant had sought an order against the council landlord for failure to repair her dwelling. The defendant appealed refusal of leave to amend the pleadings in anticipation of the trial, now due to start on the following day.
Held: Leave was . .
Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Daimler Chysler AG v Javid Alavi (t/a Merc) ChD 18-Dec-2000
Where a trader was involved in an activity quite outside any activity which might be undertaken by the holder of the registered trade mark, and there was no real likelihood of confusion, the owner of the mark could not claim that the value of his . .
Cited – Intel Corporation v Sihra ChD 2003
The court considered the observations of Pumfrey J in the Chrysler case as requiring proof of real future unfair advantage or detriment and not merely risk, and emphasised both the need for a causal connection between similarity on the one hand and . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.198598
The Hon Mr Justice Laddie
[2003] EWHC 116 (Ch), [2003] EWHC 116 (Pat)
England and Wales
Updated: 04 October 2022; Ref: scu.179046
The claimants sought unpaid royalties. The defendants sought to have the claim struck out as an abuse of process.
Held: Such interlocutory applications alleging abuse of process should now be dealt with on the same footing as other applications for summary relief. The court had to be able to say with a high degree of confidence and on summary investigation that the claim of abuse was made out and would succeed. It was not proper to allow such investigations to turn into a mini-trial. This case did have unresolved issues and had to be allowed to go to trial.
Laddie J
Times 24-Apr-2003, Gazette 05-Jun-2003, [2003] EWHC 625 (Ch)
England and Wales
See Also – Barrett v Universal-Island Records Ltd and others ChD 15-May-2006
The claimant was entitled to share in the copyright royalties of Bob Marley and the Wailers, and claimed payment from the defendants. The defendants said that the matters had already been settled and that the claim was an abuse of process, and also . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.181843
Mr Peter Prescott QC
[2003] EWHC 430 (Patent)
England and Wales
Updated: 04 October 2022; Ref: scu.179750
The Vice-Chancellor
[2003] EWHC 1887 (Ch)
England and Wales
Updated: 04 October 2022; Ref: scu.184918
The Honourable Mr Justice Jacob
[2003] EWHC 649 (Patent), [2004] RPC 37
England and Wales
Updated: 04 October 2022; Ref: scu.180456
[2016] EWHC 660 (IPEC)
England and Wales
Updated: 04 October 2022; Ref: scu.561171
[2010] EWPCC 37
Updated: 04 October 2022; Ref: scu.450542
[2011] EWPCC 34
Updated: 04 October 2022; Ref: scu.450541
[2011] EWPCC 40
Updated: 04 October 2022; Ref: scu.450543
[2011] EWPCC 39
Updated: 04 October 2022; Ref: scu.450545
[2012] EWPCC 5
Updated: 04 October 2022; Ref: scu.450540
The claimants objected to a new logo and straplines used by the defendants in their optical services section saying that the activities amounted to passing off and trade mark infringement.
[2012] EWCA Civ 24
England and Wales
Updated: 04 October 2022; Ref: scu.450522
[2012] EWPCC 3
Updated: 04 October 2022; Ref: scu.450537
The claimant asserted infringement of their copyright in a photograph. It showed the Houses of Parliament in black and white with a London bus in red. The original action had been settled and the proposed image withdrawn as a copy. The defendants had however produced their own image, but one which fitted the same description.
Held: The work was infringing: ‘ I have not found this to be an easy question but I have decided that the defendants’ work does reproduce a substantial part of the claimant’s artistic work. In the end the issue turns on a qualitative assessment of the reproduced elements. The elements which have been reproduced are a substantial part of the claimant’s work because, despite the absence of some important compositional elements, they still include the key combination of what I have called the visual contrast features with the basic composition of the scene itself. It is that combination which makes Mr Fielder’s image visually interesting. It is not just another photograph of cliched London icons.’ and
‘ I sympathise with Mr Houghton in his wish to use an image of London landmarks. He is free to do so. There are entirely independent images of the same landmarks available to be used which predate publication of Mr Fielder’s picture. But the defendants do not want to use those, no doubt for their own good reasons. Perhaps they did not look as attractive as the claimant’s image? The defendants went to rather elaborate lengths to produce their image when it seems to me that it did not need to be so complicated. Mr Houghton could have simply instructed an independent photographer to go to Westminster and take a picture which includes at least a London bus, Big Ben and the Houses of Parliament. Whatever image was produced could then have been used on the tins of tea. Such an image would not infringe. It may or may not have the same appealing qualities as the claimant’s image. Even if it did they would be the result of independent skill and labour employed by the independent photographer. Again however that is not what happened.’
Birss QC HHJ said: ‘Reviewing the matter in court, a measure of clarity emerged, the upshot being that defendants deny infringement but they do not advance a case of independent design. They contend that the question of infringement can be decided objectively, considering two matters, first taking care about what exactly is original about the claimant’s copyright work and second by conducting an objective comparison between the Tea Bag Tin Image and the 2005 Work. They contend that Mr Houghton’s intention when he set out in February 2010 to produce a new red bus image was to avoid producing a substantial reproduction of the 2005 Work but they accept that his intention is irrelevant and accept that Mr Houghton obviously knew about the claimant’s work in question’
Birss QC HHJ
[2012] EWPCC 1
Cited – Infopaq International v Danske Dagblades Forening ECJ 17-Jul-2009
ECJ Copyright Information society – Directive 2001/29/EC Articles 2 and 5 – Literary and artistic works – Concept of ‘reproduction’ Reproduction ‘in part’ Reproduction of short extracts of literary works – . .
See Also – Temple Island Collection Ltd v New English Teas Ltd and Another PCC 22-Jun-2011
The court gave reasons for disallowing an application by the claimant to amend its particulars of claim. . .
See Also – Temple Island Collection Ltd v New English Teas Ltd and Another PCC 29-Jul-2011
. .
Cited – Gross v Seligman 1914
United States – Second Circuit – The copying of a photograph so as to infringe does not require a facsimile reproduction, it is enough to recreate the scene or a substantial part of it. Infringement is not confined to exact reproduction but includes . .
Cited – Krisarts SA v Briarfine Ltd ChD 1977
The plaintiff alleged copyright infringement in respect of his paintings of well known views of London landmarks. He sought an interlocutory injunction.
Held: Reproduction in a material form of a substantial part of a work in which copyright . .
Cited – Bauman v Fussell (1953) CA 1978
The plaintiff, a photographer had taken a photograph of 2 cocks fighting which was published in a magazine. The defendant painted a picture from the photograph and the plaintiff claimed that the painting was a breach of his copyright in the . .
Cited – Interlego AG v Tyco Industries Inc PC 5-May-1988
How much new material for new copyright
(Hong Kong) Toy building bricks were manufactured by Lego in accordance with engineering drawings made for that purpose. One issue was whether new drawings made since 1972, altering the original drawings in various minor respects but added new . .
Cited – Antiquesportfolio Com Plc v Rodney Fitch and Co Ltd ChD 21-Jul-2000
In a contract to supply designs, there was an implied obligation to carry out the design work with reasonable care and skill and to use reasonable care to ensure that the materials supplied were free of any adverse claim.
Held: The breach . .
Cited – O (Peter) v F KG 16-Dec-2003
(Austrian Oberster Gerichtshof (Supreme Court)) The court considered a claim to copyright in photographs of grape varieties used as illustrations in a book. They were applying an approach to copyright based on the principle that the work must be the . .
Cited – Designers Guild Ltd v Russell Williams (Textiles) Ltd (Trading As Washington DC) HL 28-Nov-2000
Copyright Claim: Was it Copied, and How Much?
The claimant sought to enforce its copyright in artwork for a fabric design Ixia, saying the defendant’s design Marguerite infringed that copyright. Two issues faced the House. Just what had been copied and if any, then did this amount amount to the . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 October 2022; Ref: scu.450539
[2012] EWPCC 2
Updated: 04 October 2022; Ref: scu.450538
The parties disputed the novelty and potential iinfringement of a patent involving the use of honey in medical dressings.
Toulson, Etherton, Kitchin LJJ
[2012] EWCA Civ 5
England and Wales
Updated: 04 October 2022; Ref: scu.450421
Appeal from an order in a trade mark dispute between online gaming and casino operators.
Toulson, Etherton, Kitchin LJJ
[2012] RPC 19, [2012] ETMR 14, [2012] EWCA Civ 19
England and Wales
Updated: 04 October 2022; Ref: scu.450469
The parties disputed the validity of a patent.
Elias, Kitchin LJJ, Sir Robin Jacob
[2012] EWCA Civ 7
England and Wales
Updated: 04 October 2022; Ref: scu.450465
ECFI Community trade mark – Opposition proceedings – Application for Community word mark PROTIVITAL – Earlier national word and figurative marks PROTIPLUS, PROTI and PROTIPOWER – Late submission of documents – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Concept of a provision to the contrary – Rule 20(1) of Regulation (EC) No 2868/95 – Rule 50(1) of Regulation No 2868/95
Dittrich P
T-109/09, [2011] EUECJ T-109/09
Updated: 04 October 2022; Ref: scu.450097
ECFI Community trade mark – Opposition proceedings – Application for Community word mark VOLKL – Earlier international word mark VOLKL – Relative ground for refusal – Likelihood of confusion – Refusal in part of registration – Article 8(1)(b) of Regulation (EC) No 207/2009 – Genuine use of the earlier mark – Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation (EC) No 2868/95 – Competence of the Board of Appeal in the case of an appeal limited to part of the goods or services covered by the application for registration – Article 64(1) of Regulation No 207/2009 – Application for variation of the decision of the Board of Appeal – Article 65(3) of Regulation No 207/2009)
Czucz P
T-504/09, [2011] EUECJ T-504/09
Updated: 04 October 2022; Ref: scu.450098
ECFI Community trade mark – Opposition proceedings – Application for Community word mark PROTI SNACK – Earlier national word and figurative marks PROTIPLUS, PROTI and PROTIPOWER – Late submission of documents – Discretion granted by Article 74(2) of Regulation (EC) No 40/94 (now Article 76(2) of Regulation (EC) No 207/2009) – Concept of a provision to the contrary – Rule 20(1) of Regulation (EC) No 2868/95 – Rule 50(1) of Regulation No 2868/95
Dittrich P
T-62/09, [2011] EUECJ T-62/09
European
Updated: 04 October 2022; Ref: scu.450096
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark ‘only givenchy’ – Earlier Community and national word marks ONLY – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 – Reputation – Article 8(5) of Regulation No 207/2009
Truchot P
T-586/10, [2011] EUECJ T-586/10
Updated: 01 October 2022; Ref: scu.449970
The claimant appealed against findings by the Hearing Officer as to the validity of the defendant’s registered trade mark.
Briggs J
[2011] EWHC 2021 (Ch)
Trade Marks Act 1994 5(2)(b) 5(3) 5(4)(a)
England and Wales
Updated: 01 October 2022; Ref: scu.442449
Kitchin J
[2011] EWHC 1066 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.434883
The defendant sought summary judgment saying that the claim was doomed to fail. The claimants alleged copyright infringement in the rebroadcasting by the defendants of their materials.
Kitchin J
[2010] EWHC 3063 (Ch)
Copyright Designs and Patents Act 1988 6, Copyright and Related Rights Regulations 2003 (SI 2003/2498), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001
England and Wales
Updated: 01 October 2022; Ref: scu.426711
Kitchin J
[2011] EWHC 1065 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.434882
The claimant said that the defendant was marketing an anti-copyright protection device, and now sought summary judgment.
Held: A partial settlement having been reached, the court should be particularly careful with an unopposed application. Even so the defendant had no realistic prospect of succeeding in his defence at trial, given the decisions in Sony -v- Ball, and Regina -v- Higgs. Summary judgment was granted.
Floyd J
[2010] EWHC 1932 (Ch), [2010] ECDR 14, [2011] Bus LR D89, [2010] FSR 36
Copyright Designs and Patents Act 1988 296ZD 296
England and Wales
Cited – Kabushiki Kaisha Sony Computer Entertainment Inc., Sony Computer Entertainment Europe Limited, Sony Computer Entertainment UK Limited v Ball, and others ChD 19-Jul-2004
The claimant sought summary judgment in a claim that the defendant had manufactured computer chips which would be used with their playstation computer games consoles to avoid their copy protection systems.
Held: The fact that the chips only . .
Cited – Higgs v Regina CACD 24-Jun-2008
The defendant appealed against his conviction under the section. He ran a business fitting modifying chips to games consoles allowing them to play non-certificated games CDs.
Held: The appeal was allowed. It was not suggested that the use of a . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.421123
Arnold J
[2010] EWHC 443 (Ch), [2010] RPC 21, [2010] ETMR 37
England and Wales
Updated: 01 October 2022; Ref: scu.403333
Gloster DBE J
[2010] EWHC 159 (Ch)
England and Wales
Principal judgement – CDV Software Entertainment Agv Gamecock Media Europe Ltd and Others ChD 20-Nov-2009
. .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.396745
The defendants wanted to defend their patent against a possible infringement. There were negotiations, following which the defendants wrote claiming damages or licence fees. The claimant asserted that the letter constituted a threat. The defendant argued justification.
Held: The court has to determine in all the circumstances not only whether a threat was made but also its extent. The letter was not part of the without prejudice negotiations, but a simple demand. Letters had also been written to potential customers of the plaintiffs. As to the allegation of infringement, the patents were limited in their scope, and the proposed products included elements which made them non-infringing.
Laddie J
[2003] EWHC 2328 (Ch)
England and Wales
Cited – Cavity Trays Ltd v RMC Panels Products Ltd CA 1996
The threats provisions may have the effect of making litigation more rather than less likely. The exclusion in the subsection is limited in its scope. It does not give rise to a general entitlement to threaten manufacturers or importers or users. In . .
Cited – Unilever plc v Procter and Gamble Company CA 4-Nov-1999
The defendant’s negotiators had asserted in an expressly ‘without prejudice’ meeting, that the plaintiff was infringing its patent and they threatened to bring an action for infringement. The plaintiff sought to bring a threat action under section . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.227073
[2003] EWHC 2787 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.227070
Infringement of database right.
Laddie J
[2003] EWHC 1882 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.227069
Claim for infringement – sale of chip designed to bypass country code control on the claimant’s gaming machines.
Held: An infringement of copyright committed in breach of an injunction restraining such infringement can found an award of additional damages.
In distinguishing WB, Jacob J said: ‘That seems to me to be a very different case because there is no provision authorising damages for contempt itself and no provision in the general law for additional damages for the wrongs alleged [Bauer’s case was a case of breach of confidence]. Here there is. Section 97 requires the Court to have regard to all the circumstances. Those circumstances, to my mind, plainly can include the circumstance that the sales were done in breach of a Court Order. They make the act flagrant. They make the act fairly describable as ‘scandalous’. In this regard, copyright is different from many other rights precisely because there is the statutory right to additional damages if the Court, in all the circumstances, thinks it right to grant them. I do, in this case, in principle, although I am told that the evidence will establish mitigating circumstances. ‘
Jacob J
[2002] EMLR 34, [2002] EWHC 45 (Ch)
England and Wales
Distinguished – WB v H Bauer Publishing Ltd 2002
. .
Cited – Navitaire Inc v Easyjet Airline Co and Another ChD 30-Jul-2004
The claimant alleged infringement of its copyright in a software system which dealt with airline reservations. It was not said that any code had been copied, but merely that an express requirement of the defendant ordering the system was that it . .
Cited – Phonographic Performance Ltd v Reader ChD 22-Mar-2005
The claimant had in the past obtained an injunction to prevent the defendant broadcasting without their licence musical works belonging to their members at his nightclub. The defendant had obtained a licence, but had not renewed it. The claimants in . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.220472
The idea of the ‘average consumer’, the arbiter of similarity in trade mark disputes, is a legal construct which tends to emphasise that similarity is an autonomous concept of European law. Similarity and likelihood of confusion are intimately bound together. The court declined to refer questions to the ECJ for a preliminary ruling before trial, holding in essence that such a reference would be premature.
Sir Andrew Morritt V-C
[2005] EWHC 344 (Ch), [2006] RPC 29, [2005] ETMR 62
England and Wales
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
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 . .
At First instance – O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited ECJ 31-Jan-2008
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 . .
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.
Updated: 01 October 2022; Ref: scu.223379
Trade Marks
The Hon Mr Justice Laddie
[2004] EWHC 520 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.194873
Copyright infringement
[2004] EWHC 468 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.194716
Trade Mark
The Honourable Mr Justice Patten
[2004] EWHC 992 (Ch)
England and Wales
Updated: 01 October 2022; Ref: scu.196704
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word ‘Mail’ has not acquired a descriptive meaning, and nor is there any requirement in the law of passing off that the claimant’s reputation has to be exclusive. The Mail’s reputation is substantially in London and the South East. There was likelihood of confusion, and the claim in passing off succeeded. The claimant’s trade mark specification referred to a paper to be sold, and the defendant’s paper was to be free, so there was no infringement under 10(1). The likelihood of confusion was enough to find infringement under section 10(2).
The Hon Mr Justice Laddie
[2003] EWHC 1322 (Ch), Times 17-Jun-2003, Gazette 14-Aug-2003, [2003] FSR 51
England and Wales
Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – Coflexip SA, Coflexip Stena Offshore Ltd v Stolt Comes Seaway MS Ltd, Stolt Comex Seaway Ltd, Stolt Comex Seaway SA CA 31-Jul-2000
Any injunction to restrain passing off will need to be carefully drafted so not to give relief beyond that justified by the findings. . .
Cited – Ewing v Buttercup Margarine Co Ltd CA 1917
The plaintiff had an established retail business in Scotland and Northern England. It traded under the name Buttercup Dairy Company and was known as Buttercup Dairy or simply Buttercup. The Defendant was a new company called the Buttercup Margarine . .
Cited – Clock Ltd v Clock House Hotel Ltd 1936
. .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – Evans v Eradicure 1972
A plaintiff’s reputation in a trading style may be local not national. . .
Cited – Levey v Henderson-Kenton (Holdings) 1974
A trader’s reputation in one part of the country may be different to its reputation in another and may be protected locally. . .
Cited – Harrods Ltd v Harrodian School CA 3-Apr-1996
No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ . .
Cited – Thomson Holidays Limited v Norwegian Cruise Line Limited CA 17-Dec-2002
Aldous LJ said: ‘Pumfrey J in the Decon case suggested that the court’s task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that . .
Cited – Societe De Produits Nestle Sa v Unilever Plc ChD 18-Dec-2002
The claimant asserted trade mark rights in the shape of its Viennetta ice cream.
Held: ‘There is another, quite different, reason why I do not regard the shape alone as having been established as a trade mark. It is not sufficiently . .
Cited – British Sugar Plc v James Roberston and Sons ChD 17-Feb-1996
The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3).
Held: There was no trade mark infringement by the use of a common laudatory word. . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited – Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer ECJ 29-Sep-1998
In a complaint of trade mark infringement, and when comparing the mark and sign, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa.
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 – Marca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.183375
cw Inter Partes Decisions – Patents
The applicants for revocation withdrew their application on the basis of amendments submitted by the proprietor. The amendments were allowed and no order for revocation made.
Mr D Barford
O/273/02, [2002] UKIntelP o27302
England and Wales
Updated: 01 October 2022; Ref: scu.177138
Action for infringement of UK Registered Trade Marks
[2000] EWHC Ch 57
England and Wales
Updated: 01 October 2022; Ref: scu.162996
The defendant wanted to amend its software and introduce it to the Japanese market, and worked with the claimants for this purpose. The defendant suggested that a concluded agreement existed, the claimant that only no contract was concluded. There were claims for copyright infringement, for an account of damages, and for enticing employees to breach their contracts.
Held: The terms proposed were too vague to constitute a contract. Nevertheless the parties had worked together. Agreements signed on the day that an employee left were not binding because no consideration had been given. The claim for procuring breach of the employees contracts is not made out. The claim for unjust enrichment was based upon profits made but or accounted for. It was intended that the services should be paid for, and they must be. A further assessment will be required to assess how much.
The Honourable Mr Justice Jacob
[2002] EWHC 818 (Ch)
England and Wales
Cited – Banque Financiere De La Cite v Parc (Battersea) Ltd and Others HL 16-Apr-1998
The making of an order for restitution after finding an unjust enrichment by subrogation, is not dependant upon having found any common or unilateral intention of the parties. The House distinguished between contractual subrogation of the kind most . .
Cited – Way v Latilla HL 1937
Mr Way (W), the plaintiff, was employed by Ariston, which had mining operations in Africa, as a consulting engineer and manager. He met the respondent (L) in England. He was asked to seek options to acquire concessions the respondent might acquire. . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.171279
ECJ Grand Chamber – Reference for a preliminary ruling – Directive 98/44/EC – Article 6(2)(c) – Legal protection of biotechnological inventions – Parthenogenetic activation of oocytes – Production of human embryonic stem cells – Patentability – Exclusion of ‘uses of human embryos for industrial or commercial purposes’ – Concepts of ‘human embryo’ and ‘organism capable of commencing the process of development of a human being’
Ruling – Article 6(2)(c) of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions must be interpreted as meaning that an unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a ‘human embryo’, within the meaning of that provision, if, in the light of current scientific knowledge, it does not, in itself, have the inherent capacity of developing into a human being, this being a matter for the national court to determine.
V Skouris, P
[2014] EUECJ C-364/13, (2015) 142 BMLR 67, [2015] BUS LR 98, ECLI:EU:C:2014:2451, [2015] 2 CMLR 26, [2015] All ER (EC) 362, [2014] WLR(D) 546, [2015] RPC 19
European
Opinion – International Stem Cell Corporation v Comptroller General of Patents ECJ 17-Jul-2014
ECJ (Advocate General’s Opinion) – Directive 98/44/EC – Legal protection of biotechnological inventions – Patentability – Stem cells – Stimulation by parthenogenesis of unfertilised human ova to create stem cells . .
Reference – International Stem Cell Corporation v Comptroller General of Patents ChD 17-Apr-2013
The company appealed against refusal of patentunder the provision restricting such for ‘uses of human embryos for industrial or commercial purposes’
Held: The matter was referred to the ECJ. . .
At IPO – International Stem Cell Corporation (Patent) IPO 16-Aug-2012
IPO Patent applications GB0621068.6 and GB0621069.4 relate to methods where parthenogenesis is used to activate a human oocyte (i.e. stimulation of a human oocyte, without fertilisation by a sperm cell) to . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 October 2022; Ref: scu.557902
ECJ Judgment – Community trade mark – Application for Community figurative mark Splendid – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) and Article 7(2) of Regulation (EC) No 207/2009 – Equal treatment – Principle of sound administration
S. Papasavvas, P
T-203/14, [2015] EUECJ T-203/14
European
Updated: 01 October 2022; Ref: scu.547041
ECJ Judgment – Community trade mark – Opposition proceedings – Application for a Community figurative mark representing a wiggly line – Earlier national and international word and figurative marks DURU – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009
D. Gratsias, P
T-56/14, [2015] EUECJ T-56/14, ECLI:EU:T:2015:304
European
Updated: 01 October 2022; Ref: scu.547038
As a result of an uncontested application filed under section 13(1) by Sumitomo Rubber Industries Ltd, it was found that Noritoshi Nakagawa should be mentioned as a joint inventor in the published patent application and granted patent and directed that an addendum slip be prepared mentioning him as a joint inventor for the published patent application and the granted patent.
Mrs S Williams
[2006] UKIntelP o12006
England and Wales
Updated: 29 September 2022; Ref: scu.454713
ECJ Community trade mark – Application for Community word mark Complete – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Motivation – Products constituting a homogeneous group – Article 7, paragraph 1 b) and c) of Regulation (EC) No 207/2009
Azizi P
T-123/10, [2011] EUECJ T-123/10
Updated: 29 September 2022; Ref: scu.449365
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark SE (c) SPORTS EQUIPMENT – Earlier national word mark SE So Easy – Relative ground for refusal – Similarity of signs – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009
Czucz P
T-477/10, [2011] EUECJ T-477/10
Updated: 29 September 2022; Ref: scu.449370
(Intellectual Property) Approximation of laws – Copyright and related rights – Directive 2001/29/EC – Article 3 – Concept of ‘communication of a work to a public present at the place where the communication originates’- Dissemination of musical works in the presence of an audience without paying the collective management organisation the appropriate copyright fee – Entry into contracts, with the authors of the works, for copyright waiver – Scope of Directive 2001/29
K. Lenaerts, P
C-283/10, [2011] EUECJ C-283/10
Updated: 29 September 2022; Ref: scu.449353
Arnold J
[2010] EWHC 1211 (Ch), [2010] ETMR 49, [2010] ECC 18, [2010] FSR 26
England and Wales
Updated: 29 September 2022; Ref: scu.416209
VPL appealed against the terms of a copyright licence ordered by the Copyright Tribunal to be awarded to the CSC who ran music TV channels. An expired agreement provided for a fee based on 20% of gross revenues.
Floyd J
[2010] EWHC 2094 (Ch)
Copyright Designs and Patents Act 1988 126 128 129
England and Wales
Updated: 29 September 2022; Ref: scu.421493
Floyd J
[2010] EWHC 1237 (Ch)
England and Wales
Updated: 29 September 2022; Ref: scu.416208
Gloster DBE J
[2009] EWHC 2965 (Ch)
England and Wales
Principal judgement – CDV Software Entertainment Ag v Gamecock Media Europe Ltd and Others ChD 12-Feb-2010
. .
Cited – Eminence Property Developments Ltd v Heaney CA 21-Oct-2010
The court was asked whether a vendor of land, who served a notice to complete making the time for completion of the essence of the sale contract, and then, mistakenly, treated the contract as at an end prior to the expiry of the notice, was thereby . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 September 2022; Ref: scu.381524
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.
Mann J
[2006] EWHC 996 (Ch)
England and Wales
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.
Updated: 29 September 2022; Ref: scu.241548
Application for summary judgment in trade mark infringement case.
[2005] EWHC 1495 (Ch)
England and Wales
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 September 2022; Ref: scu.228594
Laddie J
[2003] EWHC 2756 (Ch)
England and Wales
Updated: 29 September 2022; Ref: scu.227075
Claim for infringement of unregistered design right.
The Honourable Mr Justice Mann
[2004] EWHC 2981 (Ch)
England and Wales
Appeal From – Dyson Ltd v Qualtex (Uk) Ltd CA 8-Mar-2006
Jacob LJ: In the context of construing an international treaty by reference to the travaux preparatoires to find a definite legal intention Lord Steyn said: ‘Only a bull’s-eye counts’ (Effort Shipping v Linden Management [1988] AC 605 at 625). Much . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 September 2022; Ref: scu.221727
[2001] EWCA Civ 1924
England and Wales
See Also – Vedatech Corporation v Seagate Software Information Management Group Ltd CA 27-Jul-2001
Renewed application for permission to appeal. . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 September 2022; Ref: scu.201538
Infringement of trade marks
[2004] EWHC 1498 (Ch)
England and Wales
Updated: 29 September 2022; Ref: scu.198534
[2003] EWHC 2015 (Ch)
England and Wales
Updated: 29 September 2022; Ref: scu.188535
Appeals from findings as to validity of patents.
[2019] EWCA Civ 2230
England and Wales
Updated: 29 September 2022; Ref: scu.645861
[2016] EWHC 599 (Ch)
England and Wales
Updated: 28 September 2022; Ref: scu.562023
An uncontested decision to authorise patent attorneys acting on behalf of the referrer to sign on behalf of the original named inventors the necessary documentation to put into effect their entitlement to a US patent application.
[2012] UKIntelP o46912
England and Wales
Updated: 28 September 2022; Ref: scu.466504
Robinson Willey Limiteds application to amend GB 2305499 in the light of three items of Japanese prior art was opposed by Baxi Heating Limited. No explicit reasons were given for the proposed amendments to the claims other than they sought to distinguish the claimed invention from the prior art. The opponents grounds of opposition were based on allegations of bad faith and covetousness and referred to a large number of prior art documents.
At the hearing, the opponents narrowed their position to the consideration of whether the proposed amendments effected a cure of the defect in terms of the three prior art documents. The issues of validity, added matter and a request for further amendments were also covered at the hearing. The Hearing Officer found that the proposed amendments failed to distinguish the invention from the prior art documents in terms of both novelty and inventive step. The application to amend was refused and costs awarded against the proprietors Robinson Willey Limited.
Mr S N Dennehey
[2004] UKIntelP o23804, GB 2305499 B
England and Wales
Updated: 28 September 2022; Ref: scu.456035
ECFI Community trade mark – Invalidity proceedings – Community word mark MPAY24 – Absolute grounds for refusal – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 – Correction of the decision by the Board of Appeal – Non-existent act – Rule 53 of Regulation (EC) No 2868/95.
Czuzc P
T-275/10, [2011] EUECJ T-275/10
Regulation (EC) No 207/2009, Regulation (EC) No 2868/95 53
Updated: 28 September 2022; Ref: scu.448723
ECFI Community trade mark – Application for Community word mark DIRECT DRIVE – Absolute grounds for refusal – Descriptive character and lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009
Czucz P
T-561/10, [2011] EUECJ T-561/10
Updated: 28 September 2022; Ref: scu.448719
ECFI Intellectual Property – Community trade mark – Opposition proceedings – Application for Community word mark PUKKA – Opposition by the proprietor of Community and national figurative marks featuring the word element pukas – Article 8(1)(b) of Regulation (EC) No 207/2009 – Partial refusal to register.
Pelikanova P
T-483/10, [2011] EUECJ T-483/10
Regulation (EC) No 207/2009 8(1)(b)
Updated: 28 September 2022; Ref: scu.448726
ECFI Community trade mark – Opposition proceedings – Application for Community word mark Powerball – Earlier word mark unregistered POWERBALL – Relative grounds for refusal – Article 8, paragraphs 3 and 4 of Regulation (EC) No 207/2009
Pelikanova P
T-484/09, [2011] EUECJ T-484/09
Updated: 28 September 2022; Ref: scu.448721
ECFI Community trade mark – Opposition proceedings – Application for Community word mark MONSTER ROCK – Earlier national mark MONSTERS OF ROCK – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009
Pelikanova P
T-216/10, [2011] EUECJ T-216/10
Regulation (EC) No 207/2009 8(1)(b)
Updated: 28 September 2022; Ref: scu.448722
Birss QC J
[2010] EWHC 3357 (Ch)
England and Wales
Updated: 27 September 2022; Ref: scu.427403
The claimant appealed against refusal of the registration of its mark ‘AX’ for confusion with the defendant objector’s registered mark ‘AXE’ for similar produxts.
Mann J
[2010] EWHC 2939 (Ch), [2011] ETMR 13
Trade Marks Act 1994, Trade Marks (International Registration) Order 2008
England and Wales
Updated: 27 September 2022; Ref: scu.425968