ECFI Community trade mark – Opposition proceedings – Application for Community word mark OFTAL CUSI – Earlier Community word mark Ophtal – Relative ground for refusal – No likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009]
T-160/09, [2011] EUECJ T-160/09
European
Updated: 17 September 2022; Ref: scu.442305
ECFI Community trade mark – Opposition proceedings – Application for Community word mark GOOD LIFE – Earlier national word mark GOOD LIFE – Genuine use of the earlier mark – Duty of diligence – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009
T-108/08, [2011] EUECJ T-108/08
European
Updated: 17 September 2022; Ref: scu.442306
ECFI Community trade mark – Opposition proceedings – Application for Community word mark ZUFAL – Earlier Community word mark ZURCAL – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Similarity of goods – Article 8, paragraph 1, sub b) of Regulation (EC) No 207/2009 – Restriction of goods of the trade mark application – Article 43, paragraph 1 of Regulation No 207/2009
T-222/10, [2011] EUECJ T-222/10
European
Updated: 17 September 2022; Ref: scu.442300
A patent for the exclusive use of an improvement in the invention of anchors contained a proviso for avoiding the patent if the patentee should not supply for Her Majesty’s service all such articles of the invention should be required, on such reasonable terms as should be settled by the Lords of the Admiralty. The latter used the invention, but did not take the articles from the patentee. The Court refused to issue a mandamus to them, to settle the terms according to the patent.
[1836] EngR 665, (1836) 4 Ad and E 949, (1836) 111 ER 1040
England and Wales
Updated: 17 September 2022; Ref: scu.314997
[1856] EngR 709, (1856) 5 HLC 707, (1856) 10 ER 1080
Updated: 17 September 2022; Ref: scu.291464
T-311/02, [2004] EUECJ T-311/02
European
Updated: 17 September 2022; Ref: scu.213844
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair in all the circumstances. No confusion was intended; they wanted only to associate their own name with the totaljobs web-site. When confusion was discovered steps were taken to minimise that confusion. The pop-up banner did not display the mark infringed, and no likelihood of confusion was established. The notion of ‘honest practices’ in commercial matters is an objective one. The judge had failed properly to distinguish between articles 51(a) and 51(b). The appeal was allowed.
Jacob LJ discussed the situation for newly formed companies: ‘Any fear that dishonest people might form companies with misleading names so as to take advantage of the defence is easily removed by the use of the proviso – such a deliberate attempt to avail oneself of another’s mark would not be an honest practice’.
Lord Justice Auld Lord Justice Rix Lord Justice Jacob
[2004] EWCA (Civ) 159, [2004] RPC 767, Times 09-Mar-2004, [2004] RPC 40
Trade Marks Act 1994 10, Trade Marks Directive (89/104) 5(1)(a) 5(1)(b)
England and Wales
Appeal from – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 20-May-2002
The defendant company used the trade marks of the claimant on their web-site to attract visitors. However the trade marks themselves were not visible when the site was browsed, or when it was listed on the search engine.
Held: The use of a . .
Appeal from – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
Cited – Avnet v Isoact ChD 1998
The claimant sold its goods via the internet. Part of the trade was to sell advertising space on its web pages. The claimant had registered the mark ‘avnet’ for advertising and promotional services. The defendant was an ISP providing internet . .
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 – Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik ECJ 23-Feb-1999
The expressions complained of as trade mark infringements were ‘BMW specialist,’ ‘Specialised in BMWs’ and ‘Repairs and maintenance of BMWs’.
Held: The Court proceeded on the basis that this was an Art.5(1)(a) case of identical marks and . .
Cited – Columbia Graphophone’s TMs 1932
The goods specified by the trade mark under attack was ‘all goods in Class 8’. Class 8 read ‘philosophical instruments, scientific instruments and apparatus for useful purposes; instruments and apparatus for teaching’. An application for partial . .
Cited – General Electric Co v General Electric Co Ltd ChD 1969
A form of co-branding was held to be non-deceptive. Grahame J said: ‘The registered use provisions are permissive only and not a compulsory prerequisite for retention of validity of the mark and that, provided the conditions of control are adequate, . .
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 – British Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .
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.
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 – Parker-Knoll v Knoll International HL 1962
A company which used its own name to brand goods in circumstances likely to cause confusion to the public had no defence to a passing off claim. Although the plaintiff need not show an intention to deceive, the Court will more readily find that a . .
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 . .
Cited – Joseph Rodgers and Sons Ltd v W N Rodgers and Co 1924
The court discussed the ‘own-name’ defence in an action for passing off or trade mark infringement: ‘To the proposition of law that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is . .
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 – Neutrogena Coroporation v Golden Ltd CA 1996
The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. . .
Cited – Dunhill v Sunoptic 1979
Trade mark infringement – own name defence . .
Cited – Guccio Gucci v Paulo Gucci 1991
Trade mark infringement – own name defence . .
Cited – Asprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
Cited – Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Cited – Re GE TM; General Electric Co v General Electric Co Ltd 1972
The court considered the historical development of the defence of honest concurrent use of trade marks. . .
Cited – Gerolsteiner Brunnen v Putsch ECJ 7-Jan-2004
There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held . .
Cited – Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
Cited – Lever Bros v Mabro 1912
Passing off by substitution is where a trader having accepted an order for one brand supplies another brand in such a way that the customer is unlikely to notice the substitution and is misled. . .
Cited – Home Office v Lownds (Practice Note) CA 21-Mar-2002
The respondent had been ordered to pay costs of over pounds 16,000 in an action for clinical negligence where the final award was only pounds 4,000. The Secretary of State appealed claiming that the costs were disproportionate.
Held: In such . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – McDonalds v Burger King 1987
Where a trade mark or passing off claim succeeds at trial, the successful claimant is entitled to an inquiry as to damages unless the court is satisfied it would be fruitless. . .
Cited – Cable and Wireless plc v British Telecommunications plc ChD 1998
The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative . .
Cited – Hurst v Leeming (9026) ChD 9-May-2002
The claimant solicitor, had instructed the defendant, a barrister, to represent him in a civil claim. He sought had damages for alleged negligence. He had agreed that the action could not proceed, and the court had to decide the costs. He resisted . .
Cited – Tesco Stores Ltd v Elogicom Ltd and Another ChD 8-Mar-2006
The claimant sought summary judgment against the defendant for operating websites using domain names which included the claimant’s name and trade marks. Tesco had entered into agreements with a third party company who organised adverts for Tesco on . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
See Also – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd CA 14-Jul-2004
Walker v Wilshire still Good Law
After successfully appealing, the defendant claimant argued for a substantial part of its costs, saying that the defendant had unreasonably refused ADR. To pursue this, it now sought disclosure of the details of the without prejudice negotiations . .
Cited – Boehringer Ingelheim Ltd and others v Vetplus Ltd CA 20-Jun-2007
The claimants appealed refusal of an order restricting comparative advertising materials for the defendant’s competing veterinary medicine. The claimant said that the rule against prior restraint applicable to defamation and other tort proceedings . .
Cited – D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas Chd 25-Jan-2008
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an . .
Cited – 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 – Lewis v Client Connection Ltd ChD 6-Jul-2011
The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds . .
Cited – Moroccanoil Israel Ltd v Aldi Stores Ltd IPEC 29-May-2014
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action. . .
Lists of cited by and citing cases may be incomplete.
Updated: 16 September 2022; Ref: scu.194110
Floyd J
[2011] EWHC 1874 (Pat), [2011] FSR 40
England and Wales
See Also – ITV Broadcasting Ltd and Others v TVCatchup Ltd and Another PatC 14-Nov-2011
. .
At Patents Court – 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 . .
Cited – The United States of America v Nolan SC 21-Oct-2015
Mrs Nolan had been employed at a US airbase. When it closed, and she was made redundant, she complained that the appellant had not consulted properly on the redundancies. The US denied that it had responsibility to consult, and now appealed.
Lists of cited by and citing cases may be incomplete.
Updated: 16 September 2022; Ref: scu.442241
The claimants alleged infringements of confidential information rights and of patents in their wound dressings.
Birss QC J
[2011] EWHC 2039 (Pat)
England and Wales
Updated: 16 September 2022; Ref: scu.442240
Kitchin J
[2011] EWHC 1830 (Pat)
Updated: 16 September 2022; Ref: scu.441880
ECFI Community trade mark – Application for Community word mark TRUEWHITE – Absolute grounds for refusal – Article 7, paragraph 1 c) of Regulation No 207/2009 – Brand descriptive.
T-208/10, [2011] EUECJ T-208/10
Updated: 16 September 2022; Ref: scu.441777
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark TOP CRAFT – Earlier national figurative marks Krafft – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009] – Genuine use of earlier mark – Article 43, paragraph 2 of Regulation No 40/94 (now Article 42 paragraph 2 of Regulation No 207/2009) and Rule 22 of Regulation (EC) No 2868/95.
T-374/08, [2011] EUECJ T-374/08
European
Updated: 16 September 2022; Ref: scu.441774
The defendant sought a stay of the proceedings for trade mark infringement to allow an application at OHMI for the revocation of the trade mark to be decided.
Held: The court should be cautious before applying practice on patents where the same rules were not available to manage such disputes. In this case the prospect of possible delay and uncertainty if left to the European Courts weighed against the grant of a stay.
Mann J
[2007] EWHC 2668 (Ch), Times 18-Dec-2007, [2008] Bus LR 465
England and Wales
Cited – Glaxo Group Ltd v Genentech Inc and Another PatC 15-Jun-2007
So far as patents are concerned, there is a rebuttable presumption in favour of staying English proceedings over EPO proceedings. This was an issue which might deserve consideration by the Court of Appeal. . .
Lists of cited by and citing cases may be incomplete.
Updated: 16 September 2022; Ref: scu.261462
[2004] EWCA Civ 743
England and Wales
Updated: 16 September 2022; Ref: scu.198330
[1997] EWCA Civ 1602
England and Wales
Appeal from – Regina v Comptroller General of Patents, Designs and Trade Marks ex parte Lenzing Ag Chancery Division, In the Matter of European Patent (Uk) No 0,356,419 In the Name of Lenzing Ag Chancery Division, Lenzing Ag v C Admn 20-Dec-1996
The UK patents Registry must make note of the revocation of a European patent by the EPO. . .
Appealed to – Regina v Comptroller General of Patents, Designs and Trade Marks ex parte Lenzing Ag Chancery Division, In the Matter of European Patent (Uk) No 0,356,419 In the Name of Lenzing Ag Chancery Division, Lenzing Ag v C Admn 20-Dec-1996
The UK patents Registry must make note of the revocation of a European patent by the EPO. . .
Lists of cited by and citing cases may be incomplete.
Updated: 16 September 2022; Ref: scu.141998
The Court was asked whether B, either before or after leaving the claimant’s employment, following 10 years’ service, extracted the whole or selected substantial parts of the claimant’s database for his own purposes and without the consent of the claimant, thereby infringing the claimant’s database rights under Regulation 16 of the Copyright and Rights in Database Regulations 1997
[2018] EWHC B9 (Ch)
England and Wales
Updated: 15 September 2022; Ref: scu.618773
ECJ Judgment – Community trade mark – Opposition proceedings – Community trade mark Alete – Earlier national word mark ALETA – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207 / 2009 – Suspension of the administrative procedure – Rule 20, paragraph 7, c) of Regulation (EC) No 2868/95
T-544/14, [2015] EUECJ T-544/14, ECLI: EU: T: 2015:842
European
Updated: 15 September 2022; Ref: scu.554660
[2013] EWHC 1227 (Pat)
England and Wales
Updated: 15 September 2022; Ref: scu.510107
The parties disputed ownership of the copyright in certain photographs.
Floyd J
[2012] EWPCC 32
England and Wales
Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Lists of cited by and citing cases may be incomplete.
Updated: 15 September 2022; Ref: scu.464534
The hearing officer found that the invention had been made prior to the incorporation of KFL (although otherwise the terms of section 39(1)(b) were met). Accordingly the claim was dismissed.
KFL was a floor laying business with two directors, Mr Lawson and Mrs Kent. KFL claimed that Mr Lawson had made the invention whilst at KFL and that under section 39(1)(b) the invention belonged to KFL as Mr Lawsons employer. There was no dispute that Mr Lawson had made the invention in suit, or that Mr Lawson was an employee as well as a director. The defendants argued that the terms of section 39(1)(b) were not met since Mr Lawsons duties did not include making inventions and since the invention lay outside the activities of KFL They also argued that he made the invention prior to the incorporation of KFL.
[2004] UKIntelP o05604
England and Wales
Updated: 15 September 2022; Ref: scu.455860
ECFI Community trade mark – Application for three-dimensional mark – Shape of a watch with serrated edges – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207/2009.
T-235/10, [2011] EUECJ T-235/10
Updated: 15 September 2022; Ref: scu.441527
ECFI Community trade mark – Application for Community word mark BETWIN – Absolute grounds for refusal – Descriptive character-Article 7, paragraph 1, b) and c) of Regulation (EC) No 207/2009 – Obligation to state reasons – Equal treatment – Article 49 EC.
T-258/09, [2011] EUECJ T-258/09
Updated: 15 September 2022; Ref: scu.441526
ECFI Community trade mark – Application for the Community word mark TDI – Absolute ground for refusal – Descriptive character – No distinctive character acquired through use – Article 7(1)(c) and 7(3) of Regulation (EC) No 207/2009 – Articles 75 and 76(1) of Regulation No 207/2009.
T-318/09, [2011] EUECJ T-318/09
Updated: 15 September 2022; Ref: scu.441525
ECFI Community trade mark – Application for Community word mark DYNAMIC HD – Absolute grounds for refusal – Lack of distinctive character – Lack of distinctive character acquired through use – Article 7, paragraph 1 b) and paragraph 3 of Regulation (EC ) No 40/94 [now Article 7, paragraph 1 b) and paragraph 3 of Regulation (EC) No 207/2009].
T-463/08, [2011] EUECJ T-463/08
Updated: 15 September 2022; Ref: scu.441520
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark BRICOCENTER – Earlier Community figurative marks ATB CENTROS DIY Brico Centro CENTROS DIY BricoCentro – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph a, b, Regulation (EC) No 207/2009.
Forwood P
T-480/09, [2011] EUECJ T-480/09
Updated: 15 September 2022; Ref: scu.441388
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark BRICO CENTER Garden – Earlier Community figurative marks ATB CENTROS DIY Brico Centro CENTROS DIY BricoCentro – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b of Regulation (EC) No 207/2009.
T-479/09, [2011] EUECJ T-479/09
European
Updated: 15 September 2022; Ref: scu.441383
ECJ Opinion – Copyright and related rights – Directives 92/100/EEC and 2006/115/EC – Rights of Performers and Producers of Phonograms – Article 8, Paragraph 2 – Public Communication – Communication of phonograms in the indirect part of radio reported in the waiting room of a dental practice – The need for a profit – Fair pay.
Trstenjak AG
C-135/10, [2011] EUECJ C-135/10
England and Wales
Opinion – SCF Consorzio Fonografici v Marco Del Corso ECJ 15-Mar-2012
ECJ Judgment – Copyright and related rights in the information society – Direct applicability of the Rome Convention, the TRIPS Agreement and the WPPT in the European Union legal order – Directive 92/100/EC – . .
Lists of cited by and citing cases may be incomplete.
Updated: 15 September 2022; Ref: scu.441392
ECJ Copyright and related rights – Directives 92/100/EEC and 2006/115/EC – Rights of performers and phonogram producers – Article 8(2) – Communication to the public – Indirect communication to the public of phonograms in broadcasts received using radios or televisions in hotel bedrooms – Communication to the public through the provision of players and phonograms in hotel bedrooms – Users – Equitable remuneration – Article 10(1)(a) – Limitation to rights – Private use.
C-162/10, [2011] EUECJ C-162/10
Directive 92/100/EEC, Directive 2006/115/EC
European
Opinion – Phonographic Performance (Ireland) Ltd v Ireland and Others ECJ 15-Mar-2012
ECJ Copyright and related rights – Directive 2006/115/EC – Articles 8 and 10 – Concepts of ‘user’ and ‘communication to the public’ – Installation in hotel bedrooms of televisions and/or radios to which the . .
Lists of cited by and citing cases may be incomplete.
Updated: 15 September 2022; Ref: scu.441390
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Citt BRICO CENTER – Earlier Community figurative marks ATB CENTROS DIY Brico Centro CENTROS DIY BricoCentro – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b of Regulation (EC) No 207/2009.
T-482/09, [2011] EUECJ T-482/09
Updated: 15 September 2022; Ref: scu.441382
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark max BRICO CENTER – Earlier Community figurative marks ATB CENTROS DIY Brico Centro CENTROS DIY BricoCentro – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b of Regulation (EC) No 207/2009.
T-481/09, [2011] EUECJ T-481/09
Updated: 15 September 2022; Ref: scu.441389
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Affiliato BRICO CENTER – Earlier Community figurative marks ATB CENTROS DIY Brico Centro CENTROS DIY BricoCentro – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1, sub b of Regulation (EC) No 207/2009.
T-483/09, [2011] EUECJ T-483/09
Updated: 15 September 2022; Ref: scu.441381
ECFI Community trade mark – Opposition proceedings – Application for Community word mark CAPIO – Earlier national word mark CAPIOX – Relative ground for refusal – Genuine use of the mark – Article 43(1) and (2) of Regulation (EC) No 40/94 – Likelihood of confusion – Article 8(1)(b) of Regulation No 40/94.
T-325/06, [2008] EUECJ T-325/06
Updated: 15 September 2022; Ref: scu.441357
ECJ Appeals – Community trade mark – Regulation (EC) No 40/94- Article 8(1)(b) – Word marks UNIWEB and UniCredit Wealth Management – Opposition by the proprietor of the national word marks UNIFONDS and UNIRAK and of the national figurative mark UNIZINS – Assessment of the likelihood of confusion – Likelihood of association – Series or family of trade marks.
C-317/10, [2011] EUECJ C-317/10
Updated: 15 September 2022; Ref: scu.441196
IPO Opposition. – trade mark
Mr G Salthouse
1568701
England and Wales
Updated: 15 September 2022; Ref: scu.275032
[1853] EngR 1025, (1853) 2 El and Bl 956, (1853) 118 ER 1024
Updated: 15 September 2022; Ref: scu.295011
CJEU Community trade mark – Opposition proceedings – Application for Community figurative trade mark BROTHERS by CAMPER – Earlier national figurative trade marks BROTHERS – Inadmissibility – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 40/94.
[2006] EUECJ T-43/05
European
Updated: 14 September 2022; Ref: scu.246787
[1999] EWHC Patents 233
England and Wales
Updated: 14 September 2022; Ref: scu.163099
The Court was asked to ascertain the particular items making up the subject matter of an assignment of copyright in, inter alia, ‘four golfing subjects’ as set out in a receipt.
Held: Neville J said: ‘Then it is said that there is not a sufficient description of the subject-matter of the memorandum to be found in it, the subject being ‘four golfing subjects.’ Now it is said that I cannot or that I ought not to admit parol evidence to identify those four golfing subjects, and that if I do not do that I cannot tell what particular golfing subjects were intended and referred to in the document itself. It appears to me that the cases that have been referred to shew clearly that I am entitled to receive evidence for the purpose of identifying the subject-matter of the contract. I think that both Shardlow v. Cotterell [(1881) 20 Ch. D. 90] and Plant v. Bourne [[1897] 2 Ch. 281] are authorities to the effect that parol evidence to identify the subject-matter of a contract is admissible. Here I think there can be no doubt upon the construction of the memorandum itself that four particular golfing subjects are referred to, and it seems to me that the difficulty in both the cases that I have referred to which was under consideration was whether the terms of the agreement indicated that no particular property was intended, but something which might be selected by one of the parties hereafter. In one case it was twenty-four acres of land in such and such a parish, and it was said there that you could not say that that was an agreement to sell any particular twenty-four acres, and it was held that you could shew by parol evidence that a certain twenty-four acres had been marked out and that they were the subject-matter of the contract between the vendor and the purchaser. I think therefore in this case I am entitled to hear evidence as to what the four golfing subjects purchased by the plaintiffs from Mr. Thomas were. In my opinion the evidence shews that those four golfing subjects included the picture ‘Thirteen Down.’ That is the subject-matter of the present action. In my opinion, therefore, the assignment of the copyright is sufficiently shewn by the memorandum in writing signed by the proper party.’
Neville J
[1914] 2 Ch 566
England and Wales
Cited – Lehman Brothers International (Europe) v Exotix Partners Llp ChD 9-Sep-2019
The parties had contracted to trade global depository notes issued by the Peruvian government. Each made mistakes as to their true value, thinking them scraps worth a few thousand dollars, whereas their true value was over $8m. On the defendant . .
Lists of cited by and citing cases may be incomplete.
Updated: 13 September 2022; Ref: scu.645466
[2015] UKIntelP o10215
England and Wales
Updated: 13 September 2022; Ref: scu.545529
[2015] UKIntelP o11415
England and Wales
Updated: 13 September 2022; Ref: scu.545536
[2015] UKIntelP o03015
England and Wales
Updated: 13 September 2022; Ref: scu.545490
[2015] UKIntelP o06515
England and Wales
Updated: 13 September 2022; Ref: scu.545506
In view of the fact that Clive Adrian Catlin, the named inventor, failed to comment on the application filed by Bruce Carmichael Robertson Ewan, and given the fact that the patent proprietors had filed consent, the comptroller considered the application to be unopposed. Consequently it was found that Bruce Carmichael Robertson Ewan should also be mentioned as an inventor in the granted patent. The comptroller also directed that an addendum slip mentioning him as a joint inventor be prepared for the granted patent for the invention.
Mrs S Williams
[2005] UKIntelP o32805
England and Wales
Updated: 13 September 2022; Ref: scu.456492
Park J
[2005] EWHC 670 (Ch)
England and Wales
Updated: 13 September 2022; Ref: scu.441066
The claimant said that the defendant had infriged its rights by the use of its logo on their publications.
Proudman J
[2011] EWHC 1489 (Ch)
England and Wales
Cited – Ladbroke (Football) Ltd v William Hill (Football) Ltd HL 1964
What is substantial copying
The plaintiff alleged copying of their football pools coupons and copyright infringement. The issues were as to the extent of copying required to establish infringement, and whether it was proper to look at the several parts of the work separately. . .
Applied – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Cited – Ross T Smyth and Co Ltd v Bailey Son and Co HL 1940
The court looked to what had to be shown for one party to a contract to take the actions of the other as a repudiation.
Lord Wright said that: ‘repudiation of a contract is a serious matter, not to be lightly found or inferred’ and ‘I do not . .
Cited – Decro-Wall International SA v Practitioners in Marketing Limited CA 1971
Once the court has concluded that a ‘reasonable notice’ requirement was to be implied into a contract, the question of what notice period was reasonable must be judged as at the time the notice was given.
Buckley LJ also set out the test for . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Federal Commerce Ltd v Molena Alpha Inc (The Nanfri) HL 1979
The charterers of three ships on time charter had made deductions from time charter hire payments which the shipowners regarded as unjustified. In retaliation the shipowners purported to revoke the authority of the Charterers (to be implied under . .
Cited – Gibaud v Great Eastern Railway Co CA 1921
Scrutton LJ said: ‘If you undertake to do a thing in a certain way, or to keep a thing in a certain place, with certain conditions protecting it, and have broken the contract by not doing the thing contracted for in the way contracted for, or not . .
Cited – Suisse Atlantique Societe d’Armement Maritime SA v NV Rotterdamsche Kolen Centrale HL 1966
No magic in the words “fundamental breach”
There is no rule of law which prevents parties to a contract agreeing to limit their respective liabilities. It is a question of the construction of the particular clause as to whether it applies to a fundamental breach or not. The court doubted the . .
Cited – 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 . .
Cited – La Mer Technology Inc v Laboratoires Goemar SA (Order) ECJ 27-Jan-2004
ECJ Article 104(3) of the Rules of Procedure – Trade marks – Directive 89/104/EEC – Articles 10(1) and 12(1) – Revocation of a trade mark – Notion of genuine use of a trade mark.
‘use of the mark may in some . .
Cited – Irvine, Tidswell Ltd v Talksport Ltd ChD 13-Mar-2002
The defendants used a distorted image of the claimant, a famous racing driver, to endorse its product. He claimed damages in passing off.
Held: On the facts, the famous racing driver Eddie Irvine had a property right in his goodwill which he . .
Lists of cited by and citing cases may be incomplete.
Updated: 13 September 2022; Ref: scu.440703
ECFI Community design – Invalidity proceedings – Registered Community design representing a watch attached to a lanyard – Prior design – Disclosure of prior design – Individual character – Misuse of powers – Articles 4, 6, 7 and 61 to 63 of Regulation (EC) No 6/2002.
T-68/10, [2011] EUECJ T-68/10, [2011] ECDR 20
European
Cited – PMS International Group Plc v Magmatic Ltd SC 9-Mar-2016
Overall Impression of Design is a Judgment
The respondent had alleged infringement of its registered design in the ‘Trunki’, a ride-on children’s suitcase. At first instance, the judge had held that the surface decorations were to be ignored. On appeal it had been held that the judge had . .
Lists of cited by and citing cases may be incomplete.
Updated: 13 September 2022; Ref: scu.440762
Challenge to determination of royalty rates for the use of the respondent’s music video repertoire in its broadcasts.
Etherton LJ
[2011] EWCA Civ 650
England and Wales
Updated: 13 September 2022; Ref: scu.440443
ECFI Community trade mark – Opposition proceedings – Application for Community figurative SPS Space of Sound – Earlier national figurative marks and community space ibiza, space DANCE BARCELONA, MADRID space DANCE, DANCE VALENCIA space, space MALLORCA DANCE, DANCE EIVISSA space, space SPACE IBIZA WORLD, DANCE space and earlier national word mark VIVA SPACE – Relative ground for refusal – No likelihood of confusion – Absence of similarity of the signs – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009.
T-144/10, [2011] EUECJ T-144/10
Updated: 13 September 2022; Ref: scu.440423
ECFI Community trade mark – Application for Community figurative mark representing Arms – Absolute ground for refusal – Imitation of view of the heraldic emblem of a State – Article 7, paragraph 1, h) of Regulation (EC) No. 207/2009 – Article 6ter of the Paris Convention.
T-397/09, [2011] EUECJ T-397/09
European
Updated: 13 September 2022; Ref: scu.440418
Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat.
Held: Lord Neuberger MR said: ‘In my view, insofar as such a question turns on the meaning of any particular passage in the September letter, it has to be answered by reference to what a reasonable person, in the position of the recipient of the letter, with its knowledge of all the relevant circumstances at the date the letter was written, would have understood the writer of the passage to have intended, when read in the context of the letter as a whole.’
Lord Neuberger MR
[2011] EWCA Civ 618
England and Wales
Approved – L’Oreal (UK) Limited and Another v Johnson and Johnson and Another ChD 7-Mar-2000
The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo.
Held: The court had to consider both the letter and the surrounding . .
Cited – Samsung Electronics (UK) Ltd and Another v Apple Inc ChD 4-Apr-2012
The parties were engaged in worldwide litigation disputing an alleged infringement of Apple’s registered design by Samsung’s Galaxy tablet computer. In this case, Samsung sought a declaration of non-infringement. Apple counterclaimed, alleging . .
Lists of cited by and citing cases may be incomplete.
Updated: 13 September 2022; Ref: scu.440116
Europa Community trade mark – Opposition proceedings – Application for a figurative mark consisting of a representation of a cowhide in black and white – Earlier national figurative trade mark comprising in part a representation of a cowhide in black and white – Distinctive character of an element of a trade mark – Absence of likelihood of confusion – Rejection of the opposition – Article 8(1)(b) of Regulation (EC) No 40/94.
T-153/03, [2006] EUECJ T-153/03
European
Updated: 12 September 2022; Ref: scu.242508
European Union trade mark – Application for European Union word mark SOCIAL.COM – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009
T-134/15, [2016] EUECJ T-134/15, ECLI:EU:T:2016:366
European
Updated: 12 September 2022; Ref: scu.566468
Trademark of the European Union – Three-dimensional application for a European Union mark – Form of a formwork latch – Absolute ground for refusal – Sign consisting exclusively of the shape of the product necessary to obtain a technical result – Article 7 (1) (e) (ii) of Regulation (EC) No 207/2009
T-656/14, [2016] EUECJ T-656/14
European
Updated: 12 September 2022; Ref: scu.566465
Allegation of infringement of a Patent
[2016] EWHC 1517 (Pat)
England and Wales
Updated: 12 September 2022; Ref: scu.566286
[2015] UKIntelP o15315
England and Wales
Updated: 12 September 2022; Ref: scu.545564
[2015] UKIntelP o09715
England and Wales
Updated: 12 September 2022; Ref: scu.545526
[2015] UKIntelP o11515
England and Wales
Updated: 12 September 2022; Ref: scu.545544
Birss QC HHJ
[2011] EWPCC 11, [2011] FSR 37, [2011] 4 Costs LR 654
Updated: 12 September 2022; Ref: scu.439875
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark POLO SANTA MARIA – Earlier Benelux figurative mark showing the silhouette of a polo player – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009.
T-376/09, [2011] EUECJ T-376/09
Updated: 12 September 2022; Ref: scu.439890
ECJ Trade marks – Directive 89/104/EEC – Article 7, paragraph 2 – Repackaging of a pharmaceutical product subject to parallel imports – Relevant criteria for assessing breaches a trademark right.
C-400/09, [2011] EUECJ C-400/09, [2011] EUECJ C-400/09
European
Updated: 12 September 2022; Ref: scu.439761
ECFI Community trade mark – Opposition proceedings – Application for Community word mark FLACO – Earlier national word mark FLACO – Relative ground for refusal – Identical goods – Article 8(1)(a) and (b) of Regulation (EC) No 207/2009 – Request for proof of genuine use of the earlier mark submitted for the first time before the Board of Appeal – Article 42(2) and (3) of Regulation No 207/2009 and Rule 22 of Regulation (EC) No 2868/95.
T-74/10, [2011] EUECJ T-74/10
Updated: 12 September 2022; Ref: scu.439754
ECJ Appeal – Community designs – Scope of the review of the legality of OHIM decisions relating to designs – The degree of freedom of the designer – Concept of ‘informed user’.
Advocate General Mengozzi
C-281/10, [2011] EUECJ C-281/10
European
Opinion – Pepsico v Grupo Promer Mon Graphic ECJ 20-Oct-2011
ECFI Appeal – Regulation (EC) No 6/2002 – Articles 5, 6, 10 and 25(1)(d) – Community design – Registered Community design representing a circular promotional item – Prior Community design – Different overall . .
Lists of cited by and citing cases may be incomplete.
Updated: 12 September 2022; Ref: scu.439762
ECFI Community trade mark – Opposition proceedings – Application for Community word mark RedTube – Earlier national unregistered Redtube – Failure to pay the tax within the opposition – Decision declaring the opposition deemed as unformed – Article 8, paragraph 3 of Regulation (EC) No 2869/95 – Protection of legitimate expectations – Rule 17 of Regulation (EC) No 2868/95 – Proceedings ex parte – Article 8, paragraph 2 of Regulation (EC) No. 216 / 96 – Rule 18 of Regulation No 2868/95 – Legal nature of a communication informing the Office that an opposition has been deemed admissible – Rule of parallelism and the actus contrarius – Article 80 of Regulation ( EC) No 207/2009.
T-488/09, [2011] EUECJ T-488/09
European
Updated: 12 September 2022; Ref: scu.439758
ECFI Community trade mark – Opposition proceedings – Application for Community figurative G – Marks National and Community figurative marks G – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No. 207/2009.
T-187/10, [2011] EUECJ T-187/10
European
Updated: 12 September 2022; Ref: scu.439633
[2000] EWHC 461 (Ch)
England and Wales
Updated: 11 September 2022; Ref: scu.347312
[1842] EngR 88, (1842) 2 QB 969, (1842) 114 ER 375
England and Wales
Updated: 11 September 2022; Ref: scu.307043
Floyd J
[2008] EWHC 1422 (Pat), [2008] FSR 35
England and Wales
See Also – Actavis UK Ltd v Merck and Co Inc CA 21-May-2008
Appeal against finding that patent invalid.
Held: The Court of Appeal is free to depart (but not bound to depart) from one of its previous decisions on a point in the field of patent law if satisfied that the Board have formed a settled view . .
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 September 2022; Ref: scu.270482
Action of passing off.
[2008] ScotCS CSOH – 46
Scotland
Updated: 11 September 2022; Ref: scu.266247
Appeal against refusal of request that the United Kingdom Intellectual Property Office should decline to deal with entitlement proceedings brought by Luxim in favour of the High Court.
Warren J
[2007] EWHC 1624 (Ch)
England and Wales
Updated: 11 September 2022; Ref: scu.254513
Mr Justice Lewison
[2006] EWHC 1089 (Ch)
England and Wales
Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 September 2022; Ref: scu.242152
[2002] EWCA Civ 1729, [2003] 1 BCLC 278
England and Wales
Updated: 11 September 2022; Ref: scu.217782
Patents
[2001] EWCA Civ 1589, [2002] FSR 28, (2002) 25(2) IPD 25007
England and Wales
Cited – Anchor Building Products Ltd v Redland Roof Tiles Ltd CA 23-Nov-1988
When looking at a patents challenge the question was whether the absence of a feature mentioned in the claim was ‘an immaterial variant which a person skilled in the trade would have regarded as being within the ambit of the language.’ . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 September 2022; Ref: scu.167794
David Stone (sitting as Deputy High Court Judge)
[2021] EWHC 294 (Ch)
England and Wales
Updated: 11 September 2022; Ref: scu.658909
[2015] UKIntelP o08315
England and Wales
Updated: 11 September 2022; Ref: scu.545513
[2015] UKIntelP o05615
England and Wales
Updated: 11 September 2022; Ref: scu.545508
[2015] UKIntelP o13715
England and Wales
Updated: 11 September 2022; Ref: scu.545545
[2015] UKIntelP o08615
England and Wales
Updated: 11 September 2022; Ref: scu.545521
The defendants sought assessment of their damages against the claimants under injunctions granted to the claimants and undertakings given.
Held: Arnold J surveyed the applicable legal principles.
Arnold J
[2009] EWHC 1905 (Ch), [2010] Bus LR D43, [2010] FSR 4
England and Wales
Cited – Soutzos v Asombang and Others ChD 21-Jun-2011
The claimant had obtained a freezing order against the defendants. His claim having been dismissed, the court now considered if and what damages should be paid under the cross-undertaking he had given.
Held: Setting out and applying the . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.368639
A form of co-branding was held to be non-deceptive. Grahame J said: ‘The registered use provisions are permissive only and not a compulsory prerequisite for retention of validity of the mark and that, provided the conditions of control are adequate, there is no reason for holding by using the mark without a registered user the parties have destroyed the mark’ .
Grahame J
[1969] RPC 418
England and Wales
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Appeal from – General Electric Co v General Electric Co Limited; GE TM; Re GE Trade Mark CA 1970
. .
Cited – Pegler Ltd v Wang (UK) Ltd TCC 25-Feb-2000
Standard Conract – Wide Exclusions, Apply 1977 Act
The claimant had acquired a computer system from the defendant, which had failed. It was admitted that the contract had been broken, and the court set out to decide the issue of damages.
Held: Even though Wang had been ready to amend one or . .
At first instance – General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark HL 1972
Lord Diplock said: ‘The common law of trade marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.194801
The claimant sold its goods via the internet. Part of the trade was to sell advertising space on its web pages. The claimant had registered the mark ‘avnet’ for advertising and promotional services. The defendant was an ISP providing internet services, particularly to the aviation industry, which included allowing advertising on its web pages.
Held: The parties were in different areas of trade, and there was no infringement. The court considered the general principles as to the construction of a specification of services in a trade mark registration: ‘specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.’
Jacob J
[1998] FSR 16
England and Wales
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.194799
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. This involves an assessment of the distinctiveness of the mark, and involves the assessment of many factors familiar in passing-off cases.’
Pumfrey J
[2002] EWHC 2772 (Ch)
England and Wales
See also – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 20-May-2002
The defendant company used the trade marks of the claimant on their web-site to attract visitors. However the trade marks themselves were not visible when the site was browsed, or when it was listed on the search engine.
Held: The use of a . .
Appeal from – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
See also – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 20-May-2002
The defendant company used the trade marks of the claimant on their web-site to attract visitors. However the trade marks themselves were not visible when the site was browsed, or when it was listed on the search engine.
Held: The use of a . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
See Also – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs.Com Ltd CA 14-Jul-2004
Walker v Wilshire still Good Law
After successfully appealing, the defendant claimant argued for a substantial part of its costs, saying that the defendant had unreasonably refused ADR. To pursue this, it now sought disclosure of the details of the without prejudice negotiations . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.194798
The claimant had assembled a database of addresses within the UK from several sources, including some which had in turn obtained their data from the defendant. The defendant’s terms for supplying such information were said to restrain such re-use. The claimant alleged procurement by the defendant of a breach of its contract with the Land Registry.
Held: Some claims were established, but the defendant succeeded on a sufficient number of elements to be seen as the overall victor.
Birss J
[2019] EWHC 3007 (Ch)
Re-use of Public Sector Information Regulations 2015
England and Wales
Updated: 10 September 2022; Ref: scu.643896
Ms S Wilson
[2018] UKIntelP o53718
England and Wales
Updated: 10 September 2022; Ref: scu.631587
The parties disputed whether joint authorship of the screenplay for a film, ‘Florence Foster Jenkins’. The claimant now sought a declaration of sole authorship of film screenplay, and the defendant cross-claimed for a declaration of joint authorship. The parties had been cohabiting at the time of its creation, and though the screenplay had been publicly credited to the defendant.
Held: He concluded that: ‘ . . the textual and non-textual contributions made by Ms Kogan never rose above the level of providing useful jargon, along with helpful criticism and some minor plot suggestions. Taken together they were not sufficient to qualify Ms Kogan as a joint author of the Screenplay, even had those contributions all been made in the course of a collaboration to create the Screenplay. Mr Martin was the sole author.’
The judge considered the case law as ‘an admonition that the best approach for a judge is to place little if any reliance at all on witnesses’ recollections of what was said in meetings and conversations and instead base factual findings on inferences drawn from documentary evidence and known or probable facts’.
Hacon J
[2017] EWHC 2927 (IPEC)
Copyright, Designs and Patents Act 1988 10(1)
England and Wales
Cited – Robin Ray v Classic FM Plc PatC 18-Mar-1998
Contractor and Client Copyrights
The plaintiff had contributed a design for a system of classifying and selecting tracks to be played on a radio station. He did so under a consultancy contract.
Held: A Joint authorship claim required that the contributor had made some direct . .
Still Good law – Levy v Rutley CCP 1871
A claim of joint authorship was made in a play entitled The King’s Wager, or The Camp, the Cottage and the Court. The play had been written by a Mr Wilks, to whose work the plaintiff, and others at the plaintiff’s suggestion, had added a scene and a . .
Cited – Hodgens v Beckingham CA 19-Feb-2003
The defendant appealed a finding of infringement in a music copyright work, ‘Young at Heart’, based on a claim of joint authorship. The claimant had delayed his claim for many years, but now sought only rights to future royalties.
Held: The . .
Cited – Wiseman v George Weidenfeld and Nicholson Ltd ChD 1985
A play called The English Way of Doing Things was written by the second defendant, William Donaldson, who based it on his novel of the same name. Donaldson was an established novelist but had never written a play. The idea for transforming the novel . .
Cited – Cala Homes (South) Ltd and others v Alfred McAlpine Homes East Ltd ChD 6-Jul-1995
The plaintiff alleged that the defendant had copied its house designs after a senior employee involved in creating the designs left and eventually came to work for the defendant. The plaintiff alleged that the copying was flagrant allowing . .
Cited – Fylde Microsystems Limited v Key Radio Systems Limited PatC 11-Feb-1998
The plaintiff’s employee wrote computer software for use with telecommunications equipment. The defendant’s employee had set the specification of the software, reported errors and bugs, made suggestions as to the cause of some faults and had . .
Cited – Brighton and Another v Jones ChD 18-May-2004
The claimant was the director of a play. The defendant had written the entirety of the play first presented at rehearsals, although during rehearsals the claimant suggested changes. The parties disputed the copyright and other rights in a stage . .
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 – . .
Appeal from – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.599597
[2017] EWCA Civ 2135
England and Wales
Updated: 10 September 2022; Ref: scu.601457
Application for summary judgment in a claim for trade mark infringement.
Held: The application was refused. The term ‘consent’ used in the Regulation had an autonomous Community meaning and it required that the proprietor demonstrate unequivocally the renunciation of its exclusive rights. The demonstration might be implicit but if so, the evidence whther of facts or surrounding circumstances must not leave doubt. The defendant had failed to prove the claimant’s consent, and defence of estoppel was not available to it as a matter of law. Even so, the defences under articles 9 and 12 would not inevitably fail.
Males J
[2016] EWHC 809 (Ch), [2016] WLR(D) 186, [2016] Bus LR 808
Council Regulation (EC) No 207/2009
England and Wales
Cited – Kogan v Martin and Others CA 9-Oct-2019
Dispute over the authorship of the screenplay of a film.
Held: ‘the judgment cannot stand. The judge has adopted an erroneous approach to the evidence, failed to make important findings of primary fact, failed to take account of material . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.562461
[2015] UKIntelP o16315
England and Wales
Updated: 10 September 2022; Ref: scu.545567
[2015] UKIntelP o05215
England and Wales
Updated: 10 September 2022; Ref: scu.545503
Action for infringement of European Patent (UK) No. 1,816,931 (‘Display panel and display system’).
Birss J
[2013] EWPCC 27
England and Wales
Updated: 10 September 2022; Ref: scu.510883
ECJ Community trade marks – Regulation (EC) No 207/2009 – Article 9(1) – Concept of ‘third party’ – Proprietor of a later Community trade mark
[2013] EUECJ C-561/11, C-561/11
European
Opinion – Federation Cynologique Internationale v Federacion Canina Internacional De Perros De Pura Raza ECJ 15-Nov-2012
ECJ (Opinion) Community trade mark – Infringement – Term ‘third party’ . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 September 2022; Ref: scu.510896
ECJ Appeal – Article 181 of the Rules of Procedure of the Court of Justice – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Likelihood of confusion – Word mark ZYDUS – Opposition by the proprietor of the Community trade mark ZIMBUS – Partial refusal of registration by the Board of Appeal of OHIM
C-268/12, [2013] EUECJ C-268/12
European
Updated: 10 September 2022; Ref: scu.510304
Infringement allegation
[2013] EWPCC 31
England and Wales
Updated: 10 September 2022; Ref: scu.510889
IPO The applicant in this case did not respond to the first examination report until he received a letter from the Office (nearly four years later) saying that because he had not replied to the examination report his application was going to be treated as refused.
The Hearing Officer concluded that it was no longer possible to extend the reply period because more than two months had elapsed since the period had expired. He also decided that if he had had discretion to accept a late response, the reasons given were not sufficient to justify a favourable exercise of that discretion in the particular circumstances of this case. The application was refused for failure to comply with section 18(3) within the specified period.
[2008] UKIntelP o08708
England and Wales
Updated: 09 September 2022; Ref: scu.456960