Category: Intellectual Property

Cinpres Gas Injection Ltd v Melea Ltd: ChD 9 Oct 2006

The claimant had sought a declaration as to the ownership of a patent, and now said that a witness had procured his earlier judgment by perjury. The witness now said that he had formed his statement against a feeling of oppression by the threat of a US lawsuit.
Held: The decision in the first proceedings was affected by, and indeed was obtained by, perjured evidence which was material to that decision, but that the benefiting party (Mr Ladney) neither procured nor knowingly took advantage of that perjury. In all the circumstances, despite the perjury by which it was obtained, the 1996 decision in the first proceedings cannot be impeached and governs the issues which would otherwise arise in this action as to the ownership of the patent. Accordingly this action has to be dismissed.

Judges:

Mann J

Citations:

[2006] EWHC 2451 (Ch)

Links:

Bailii

Statutes:

Patents Act 1997 37

Jurisdiction:

England and Wales

Citing:

Cited – Odyssey Re (London) Limited and Alexander Howden Holdings Limited v OIC Run-Off Limited (Formerly Orion Insurance Company Plc) CA 13-Mar-2000
There had been litigation between the two companies previously. The general manager and director had given evidence which was accepted by the judge and again on appeal. After his death and in other proceedings it became clear that he had perjured . .
Cited – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .

Cited by:

See Also – Cinpres Gas Injection Limited v Melea Limited ChD 23-Nov-2006
The claimant sought to pursue its licence claim after its claim to a proprietary interest in the patent had been dismissed.
Held: The claim misunderstood the way section 37 worked. To have a claim to a license the license the claimant had to . .
Appeal from – Cinpres Gas Injection Ltd v Melea Ltd CA 24-Jan-2008
A final judgment may be impugned for fraud. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 02 September 2022; Ref: scu.245215

British Horseracing Board Ltd and Another v William Hill Organization Ltd: CA 13 Jul 2005

The Court allowed William Hill’s appeal, holding that BHB had not established that the ECJ had given its earlier ruling on the basis of an erroneous assumption of fact and that the result of applying the ruling was that BHB’s Database did not fall within Article 7 of the Directive or within the Database Regulations. The final list was what mattered and was something different in character. What went before, even though it may have involved selection, did not qualify the list for sui generis right.
Jacob LJ said: ‘So far as BHB’s database consists of the officially identified names of riders and runners, it is not within the sui generis right of Art.7(1) of the Directive. And I think the same reasoning applies in those cases (big races) where the BHB publishes a list of provisional runners prior to final declarations. Again what is published is different in character from a mere list of gathered in information. It is a list of horses that BHB have accepted as qualifying to race – as properly and actually entered.’

Judges:

Pill, Clarke, Jacob LJJ

Citations:

[2005] EWCA Civ 863, [2005] RPC 35

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – British Horseracing Board Ltd v William Hill Organisation Ltd PatC 9-Feb-2001
The defendants received data, prepared and distributed by the claimants, regarding horse races, and incorporated the information into their web pages as part of a betting service. There might have been other, indirect, ways of obtaining the same . .
See Also – British Horseracing Board Ltd and Others v William Hill Organization Ltd CA 31-Jul-2001
The Board had established a database of information about horse racing. It was costly. The defendants recovered the information from a licensed user, and used it for its own business purposes. It was not suggested that the licensee had any right to . .
At ECJ – The British Horseracing Board Ltd and Others v William Hill Organization Ltd ECJ 9-Nov-2004
bhb_whECJ2004
The claimant sought to prevent re-use by the defendant of information from its horse racing subscription service. They claimed that they had a database right in the information. It cost andpound;4m per year to assemble.
Held: The expression . .

Cited by:

Cited – Attheraces Ltd and Another v British Horse Racing Board and Another ChD 21-Dec-2005
The claimants relayed horse racing events to bookmakers. The respondents collected data about the races and horses. The claimants sought the freedom to use that data, and the defendants asserted a database right to control such use.
Held: BHB . .
Cited – Attheraces Ltd and Another v The British Horseracing Board Ltd and Another CA 2-Feb-2007
The defendant appealed a finding that it had abused its dominant market position in refusing to supply to the claimant a copyright licence for its information on horse racing at a proper or acceptable price. The defendant was said to have a monopoly . .
Cited – Football Dataco Ltd and Others v Brittens Pools Ltd (In Action 3222) and Others ChD 23-Apr-2010
The court considered what rights existed in the annual football fixture lists created by the claimants. The claimants said that the list was created only with a considerable effort applying certain rules. The defendants denied that any copyright . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 02 September 2022; Ref: scu.228478

Asahi Medical Co Ltd v Macopharma (UK) Ltd, Macopharma S A: CA 16 Apr 2002

Citations:

[2002] EWCA Civ 466

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – PLG Research Ltd and Another v Ardon International Ltd and Others ChD 25-Nov-1994
A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 02 September 2022; Ref: scu.171207

Lan Airlines v OHMI – Air Nostrum (Lineas Aereas Del Mediterraneo Lam): ECFI 8 Feb 2011

ECFI Community trade mark – Opposition proceedings – Application for Community word mark LINEAS AEREAS DEL MEDITERRANEO LAM – Earlier Community word and figurative marks LAN – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).

Citations:

T-194/09, [2011] EUECJ T-194/09

Links:

Bailii

European, Intellectual Property

Updated: 01 September 2022; Ref: scu.428499

Oyster Cosmetics v OHMI – Kadabell (Oyster Cosmetics): ECFI 2 Feb 2011

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Oyster cosmetics – Earlier Community figurative mark Kadus oystra AUTO STOP PROTECTION – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-437/09, [2011] EUECJ T-437/09

Links:

Bailii

European, Intellectual Property

Updated: 01 September 2022; Ref: scu.428500

Budejovicky Budvar (Approximation Of Laws): ECJ 3 Feb 2011

ECJ Directive 89/104/EEC – Approximation of the laws of the Member States on trade marks – Articles 4(1)(a) and 9(1) – Limitation in consequence of acquiescence – Concept of acquiescence – European Union law concept – Possibility of having recourse to national trade mark law, including provisions on the honest concurrent use of two identical marks.

Citations:

C-482/09, [2011] EUECJ C-482/09 – O, [2011] EUECJ C-482/09

Links:

Bailii, Bailii

Statutes:

Directive 89/104/EEC

Jurisdiction:

European

Intellectual Property

Updated: 01 September 2022; Ref: scu.428487

Guhring v OHIM (And De Gris Argent) T-300/09: ECFI 3 Feb 2011

ECFI Community trade mark – Application for Community trade mark consisting of a combination of yellow gorse and silver – CTM application consisting of a combination of yellow ocher and gray money – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1, b) of Regulation (EC) No 207/2009 – Examination notice of facts – Article 76, paragraph 1 of Regulation No 207/2009 – Obligation to state reasons – Article 75 of Regulation No. 207 / 2009.

Citations:

[2011] EUECJ T-300/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 September 2022; Ref: scu.428496

Guhring v OHIM And De Gris Argent: ECFI 3 Feb 2011

ECFI Community trade mark – Application for Community trade mark consisting of a combination of yellow gorse and silver – CTM application consisting of a combination of yellow ocher and gray money – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1, b) of Regulation (EC) No 207/2009 – Examination notice of facts – Article 76, paragraph 1 of Regulation No 207/2009 – Obligation to state reasons – Article 75 of Regulation No. 207 / 2009

Citations:

T-299/09, [2011] EUECJ T-299/09

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 September 2022; Ref: scu.428495

Media Cat Ltd v Billington: PCC 17 Dec 2010

Citations:

[2010] EWPCC 18

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

See Also – Media CAT Ltd v Adams and Others PCC 8-Feb-2011
The claimants had begun copyright infringement proceedings claiming that they represented the rights holders in pornographic films said to have been file shared by the defendants. Faced with insuperable difficulties, they purported to withdraw the . .
See Also – Media Cat Ltd v Adams and Others PCC 18-Apr-2011
The claimants had begun copyright infringement cases. Having been refused a request to be allowed to withdraw the cases as an abuse, their solicitors now faced an application for a wasted costs order.
Held: The court only has jurisdiction to . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 September 2022; Ref: scu.428486

Media CAT Ltd v Adams and Others: PCC 8 Feb 2011

The claimants had begun copyright infringement proceedings claiming that they represented the rights holders in pornographic films said to have been file shared by the defendants. Faced with insuperable difficulties, they purported to withdraw the cases intending to re-issue.
Held: Such a procedure required the permission of the court. It would amount to an abuse of process and was not to be supported.

Judges:

Birss QC J

Citations:

[2011] EWPCC 6

Links:

Bailii

Citing:

See Also – Media Cat Ltd v Billington PCC 17-Dec-2010
. .

Cited by:

Principal judgment – Media Cat Ltd v Adams and Others PCC 18-Apr-2011
The claimants had begun copyright infringement cases. Having been refused a request to be allowed to withdraw the cases as an abuse, their solicitors now faced an application for a wasted costs order.
Held: The court only has jurisdiction to . .
Cited – Golden Eye (International) Ltd v Maricar PCC 23-Sep-2011
In each of two cases, the claimant sued in copyright alleging that the defendant had made available copies of a film, to which it held the rights, for download from the internet.
Held: In view of the similarities in the case with the Media Cat . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 01 September 2022; Ref: scu.428482

Edwin v OHIM (Intellectual Property): ECJ 27 Jan 2011

ECJ (Opinion) Appeal – Community trade mark – Word mark ‘ELIO FIORUCCI’ – Right to a name – Application for a declaration of invalidity lodged by the bearer of the patronymic included in the mark – Article 52(2)(a) of Regulation (EC) No 40/94 – Rejection of that application by the Board of Appeal – Review by the General Court and Court of Justice of the application of national law.

Citations:

C-263/09, [2011] EUECJ C-263/09P

Links:

Bailii

Jurisdiction:

European

Cited by:

Opinion – Edwin v OHIM (Intellectual Property) ECJ 5-Jul-2011
ECJ Grand Chamber – Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 52(2)(a) – Community word mark ELIO FIORUCCI – Application for a declaration of invalidity based on a right to a name under . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 September 2022; Ref: scu.428408

Hafele v Ohmi – Topcom Europe (Topcom): ECFI 19 Jan 2011

ECJ Community trade mark – Opposition proceedings – Application for Community word mark Topcom – Earlier Community and Benelux word marks TOPCOM – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 207/2009.

Citations:

T-336/09, [2011] EUECJ T-336/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 September 2022; Ref: scu.428410

Advance Magazine Publishers v OHMI – Capela and Irmaos (Vogue) (Intellectual Property): ECFI 18 Jan 2011

ECJ Community trade mark – Opposition proceedings – Application for Community word mark VOGUE – Earlier national word mark VOGUE Portugal – Absence of genuine use of the earlier mark – Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 42(2) and (3) of Regulation (EC) No 207/2009).

Citations:

T-382/08, [2011] EUECJ T-382/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 01 September 2022; Ref: scu.428402

Nouveau Fabrics Limited v Voyage Decoration Limited, Dunelm Soft Furnishings Limited: ChD 28 Apr 2004

Action in which the Claimant maintains a claim for infringement of its copyright in artistic works, namely design drawings for a fabric called ‘Pineapple’.

Judges:

Mann, The Honourable Mr Justice Mann

Citations:

[2004] EWHC 895 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 01 September 2022; Ref: scu.196058

Rivella International Ag v Office For Harmonisation In The Internal Market (Trade Marks And Designs) v Baskaya Di Baskaya Alim E C-Sas: ECJ 12 Dec 2013

ECJ Appeal – Community trade mark – Figurative mark containing the word element ‘BASKAYA’ – Opposition – Bilateral convention – Territory of a non-Member State – ‘Genuine use’

Citations:

C-445/12, [2013] EUECJ C-445/12

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.518971

Wind v OHMI – Sanyang Industry (Wind): ECFI 15 Dec 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark Wind – Earlier national figurative mark Wind – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 – Lack of similarity of the goods and of the services.

Citations:

[2010] EUECJ T-451/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427733

Epcos v OHMI – Epco Sistemas (Epcos): ECFI 15 Dec 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative EPCOS – Earlier national figurative mark EPCO SISTEMAS – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) n – 40 / 94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009] – Genuine use of earlier mark – Article 43, paragraphs 2 and 3 of Regulation No 40/94 (now Article 42, paragraphs 2 and 3 of Regulation No 207/2009).

Citations:

T-132/09, [2010] EUECJ T-132/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427693

Rubinstein v OHMI – Allergan (Botolist): ECFI 16 Dec 2010

ECFI Community trade mark – Invalidity proceedings – Community word marks BOTOLIST and BOTOCYL – Earlier national figurative and word marks BOTOX – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009) – Obligation to state the reasons on which the decision is based – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009).

Citations:

T-345/08, [2010] EUECJ T-345/08

Links:

Bailii

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427721

DTI v OHMI – Gestion De Recursos Y Soluciones Empresariales (Solaria): ECFI 15 Dec 2010

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

Citations:

T-188/10, [2010] EUECJ T-188/10

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427691

Amen Corner v OHMI – Comercio Electronico Ojal (Seve Trophy): ECFI 17 Dec 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative SEVE TROPHY – Earlier Community figurative marks Seve Ballesteros Trophy and SEVE TROPHY – Relative grounds for refusal – Lack of similarity of goods and services – Article 8, paragraph 1, b ) of Regulation (EC) No 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009] – No unfair advantage of the distinctive character or the repute of the mark and previous injury to them – Article 8, paragraph 5 of Regulation No 40/94 (now Article 8, paragraph 5 of Regulation No 207/2009).

Citations:

T-192/09, [2010] EUECJ T-192/09

Links:

Bailii

Statutes:

Regulation No 207/2009

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427663

Baena Grupo v OHMI – Neuman And Galdeano Del Sel (Personnage Assis): ECFI 16 Dec 2010

ECFI Community Design – Invalidity proceedings – Community Design registered representing a seated figure – Earlier Community figurative mark – Grounds for revocation – Individual character – different overall impression – Article 6 and Article 25, paragraph 1 b) of Regulation (EC) No 6 / 2002.

Citations:

T-513/09, [2010] EUECJ T-513/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427666

Chocoladefabriken Lindt and Sprungli v OHIM (Forme D’Un Lapin En Chocolat Avec Ruban Rouge): ECFI 17 Dec 2010

ECFI Community trade mark – Application for three-dimensional CTM – Shape of a bell with red ribbon – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 [ now Article 7, paragraph 1 b) of Regulation (EC) No 207/2009].

Citations:

T-336/08, [2010] EUECJ T-336/08

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 7(1)(b)

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427670

Chocoladefabriken Lindt and Sprungli v OHIM (Forme D’Un Renne En Chocolat): ECFI 17 Dec 2010

ECFI Community trade mark – Application for three-dimensional CTM – Shape of a reindeer chocolate – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 [now Article 7, paragraph 1 b) of Regulation (EC) No 207/2009]

Citations:

T-337/08, [2010] EUECJ T-337/08

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427672

Chocoladefabriken Lindt and Sprungli v OHIM (Forme D’Une Clochette Avec Ruban Rouge): ECFI 17 Dec 2010

ECFI Community trade mark – Application for three-dimensional CTM – Shape of a bell with red ribbon – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 [ now Article 7, paragraph 1 b) of Regulation (EC) No 207/2009].

Citations:

T-346/08, [2010] EUECJ T-346/08

Links:

Bailii

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427673

Chocoladefabriken Lindt and Sprungli v OHIM (Forme D’Un Lapin En Chocolat): ECFI 17 Dec 2010

ECFI Community trade mark – Application for three-dimensional CTM – Shape of a chocolate bunny – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 40/94 [now Article 7, paragraph 1 b) of Regulation (EC) No 207/2009] – Lack of distinctiveness acquired through use – Article 7, paragraph 3 of Regulation No 40/94 (now Article 7 Paragraph 3 of Regulation No 207/2009).

Citations:

T-395/08, [2010] EUECJ T-395/08

Links:

Bailii

Statutes:

Regulation (EC) No 40/94

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427671

Bianchin v OHMI – Grotto (Gasoline) (Intellectual Property) French Text: ECFI 15 Dec 2010

ECFI Community trade mark – Invalidity proceedings – Community word mark GASOLINE – Earlier Community figurative mark GAS – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) No 207/2009.

Citations:

[2010] EUECJ T-380/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427668

Tresplain Investments v OHMI- Hoo Hing (Golden Elephant Brand): ECFI 9 Dec 2010

ECJ Community trade mark – Invalidity proceedings – Figurative Community trade mark Golden Elephant Brand – Non-registered national figurative mark GOLDEN ELEPHANT – Relative ground for refusal – Reference to the national law governing the earlier mark – Common-law action for passing-off – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009) – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009) – Articles 8(4) and 52(1)(c) of Regulation No 40/94 (now Articles 8(4) and 53(1)(c) of Regulation No 207/2009) – New pleas in law – Article 48(2) of the Rules of Procedure.

Citations:

T-303/08, [2010] EUECJ T-303/08

Links:

Bailii

European, Intellectual Property

Updated: 31 August 2022; Ref: scu.427350

Earle Beauty v OHIM (Naturally Active): ECFI 9 Dec 2010

ECFI Community trade mark – Application for the Community word mark NATURALLY ACTIVE – Absolute ground for refusal – Lack of inherent distinctive character – Lack of distinctive character acquired by use – Article 7(1)(b) and (3) of Regulation (EC) No 207/2009.

Citations:

T-307/09, [2010] EUECJ T-307/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427321

Federation Internationale Des Logis v OHIM (Carre Convexe Vert): ECFI 9 Dec 2010

ECFI Community trade mark – Application for Community figurative mark representing a square convex Green – Absolute ground for refusal – Lack of distinctive character – Article 7, paragraph 1 b) of Regulation (EC) No 207/200.

Citations:

T-282/09, [2010] EUECJ T-282/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427324

Novartis v OHMI – Sanochemia Pharmazeutika (Tolposan): ECFI 15 Dec 2010

ECFI Community trade mark – Opposition proceedings – Application for the Community word mark TOLPOSAN – Earlier international word mark TONOPAN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009.

Citations:

[2010] EUECJ T-331/09, T-331/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 31 August 2022; Ref: scu.427332

L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoire Garnier and Cie, L’Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited: ECJ 9 Dec 2010

ECJ Opinion – Information society – Search engine – Keyword advertising – Operator of electronic marketplace – Keywords corresponding to trade marks – Directive 89/104/EEC (‘Trade Mark directive’) – Articles 5 and 7 – Regulation (EC) No 40/94 (‘Community Trade mark regulation’) – Articles 9 and 13 – Liability of an operator of electronic marketplace for the information it hosts – Directive 2000/31/EC (‘Directive on electronic commerce’) – Article 14 – Member States’ duty to ensure that rightholders are in a position to apply for injunctions against intermediary providers of services used by third parties to infringe those rights – Directive 2004/48/EC (‘Directive on the enforcement of intellectual property rights’) – Article 11 – Freedom of expression – Freedom of Commerce – Directive 76/768 (‘Cosmetics directive’).

Judges:

Jaaskinen AG

Citations:

C-324/09, [2010] EUECJ C-324/09 – O

Links:

Bailii

Statutes:

Directive 89/104/EEC, Regulation (EC) No 40/94, Directive 2000/31/EC, Directive 2004/48/EC, Directive 76/768

Jurisdiction:

European

Cited by:

Opinion – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoire Garnier and Cie, L’Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited ECJ 12-Jul-2011
ECJ Grand Chamber – Trade marks – Internet – Offer for sale, on an online marketplace targeted at consumers in the European Union, of trade-marked goods intended, by the proprietor, for sale in third States – . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 31 August 2022; Ref: scu.427328

Gerber Products Company v Gerber Foods International Ltd: ChD 18 Mar 2002

The opponent marketed baby food using the trade mark. The applicant sough revocation of the trade mark on the grounds of it not having been bona-fide used.
Held: The Electrolux case did not establish that the mark owner had to establish commercial use on a substantial scale in addition to bona fide use. Section 26(1) of the 1938 Act continued to apply to this matter. A test marketing of 1200 jars of baby food was a bona fide use, and was sufficient to defend the mark.

Judges:

The Vice-Chancellor

Citations:

Gazette 25-Apr-2002, [2002] EWHC 428 (Ch)

Links:

Bailii

Statutes:

Trade Marks Act 1938 26(1), Trade Marks Act 1994 Sch 3 para 17(1)

Jurisdiction:

England and Wales

Citing:

Cited – Electrolux Ltd v Electrix Ltd 1954
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 29 August 2022; Ref: scu.170002

Vestel Elektronik Sanayi Ve Ticaret As Vestel Uk Ltd v HEVC Advance Llc and Another: ChD 21 Oct 2019

The second claimant (‘Vestel UK’) seeks relief for alleged abuse of a dominant position by the defendants. This is in a market relating to patents claiming inventions used in the manufacture of high definition televisions.

Judges:

Judge Hacon

Citations:

[2019] EWHC 2766 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 29 August 2022; Ref: scu.642650

MGN Ltd and Others v Grisbrook: CA 9 Dec 2010

Judges:

Sir Andrew Morritt Ch, Leveson, Etherton LLJ

Citations:

[2010] EWCA Civ 1399

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Cited – Crema v Cenkos Securities Plc CA 16-Dec-2010
C sought payment of broker fees after assisting in raising funds for a venture capital company. The parties disputed the terms as to when payment was to be made.
Held: The appeal was allowed. The evidence did not allow the inference of the . .
Lists of cited by and citing cases may be incomplete.

Contract, Intellectual Property

Updated: 28 August 2022; Ref: scu.427001

Hudson Bay Apparel Brands Llc v Umbro International Ltd: ChD 4 Nov 2009

Judges:

Mark Herbert QC

Citations:

[2009] EWHC 2861 (Ch), : [2010] ETMR 15, [2009] EWHC B28 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Appeal from – Hudson Bay Apparel Brands Llc v Umbro International Ltd CA 11-Aug-2010
The parties disputed the operation of contracts under which the respondent licensed various football associated apparel for sale by the appellant. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 August 2022; Ref: scu.401891

Regina v Davies (Derrick): CACD 6 Nov 2003

The defendant was convicted of having in his possession goods bearing a a sign identical to or likely to be mistaken for a registered trademark. A confiscation order was made, which he now appealed.
Held: Under section 71, a person benefitted from the offence if he obtained property as a result of or inconnection with its offence. The defendant asserted that there had not been a qualifying offence. There had been. The offences were motivated by the desire for gain. In this case the goods were property, and had been acquired in connection with the commission of the offence. There were in fact two qualifying offences here, and the appeal failed.

Judges:

Waller LJ, Hughes J, Dame Heather Steel

Citations:

Times 21-Nov-2003

Statutes:

Proceeds of Crime Act 1995 2, Criminal Justice Act 1988 71

Jurisdiction:

England and Wales

Intellectual Property, Crime

Updated: 27 August 2022; Ref: scu.188244

Actavis UK Ltd and Others v Eli Lilly and Company: PatC 12 Nov 2015

application by Actavis for judgment on admissions seeking a declaration.

Judges:

Arnold J

Citations:

[2015] EWHC 3302 (Pat)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

See Also – Actavis UK Ltd and Others v Eli Lilly and Company CA 25-Jun-2015
Lilly appealed against a finding that an Actavis drug had not infringed its patents to the limited extent of holding that there would be indirect infringement in four jurisdictions, but they agreed with the Judge that there would be no direct . .

Cited by:

See Also – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 27 August 2022; Ref: scu.558415

Rezon v OHMI – Mobile.International (Mobile.De Promotor): ECFI 22 Apr 2015

ECJ Judgment – Community trade mark – Invalidity proceedings – Community word mark mobile.de Promotor – Mobile Earlier national figurative mark – Rejection of the application for invalidity – Article 165, paragraph 4 b) of Regulation (EC) No 207/2009

Judges:

MD Gratsias (Rapporteur), P

Citations:

T-337/14, [2015] EUECJ T-337/14, ECLI: EU: T: 2015 220

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009 165

Jurisdiction:

European

Intellectual Property

Updated: 27 August 2022; Ref: scu.545884

Alk-Abello Ltd v Meridian Medical Technologies Dey Pharma Lp: PCC 9 Nov 2010

The court was asked whether the case should be transferred from the Patents County Court to the High Court Patents Court.
Birss HHJ identified the relevant factors: ‘the points to consider are:-
i) the financial position of the parties (s289(2) 1988 Act). This includes but is not limited to considering whether a party can only afford to bring or defend the claim in a patents county court (para 9.1(1) Practice Direction 30). This factor is closely related to access to justice. The Patents County Court was set up to assist small and medium sized enterprises in enforcing and litigating intellectual property disputes. Guidance on the nature of these enterprises can be found from the Commission Recommendation 2003/361/EC.
ii) whether the claim is appropriate to be determined by a patents county court. This involves considering:
a) the value of the claim, including the value of an injunction and the amount in dispute. (Para 9.1(2)(a) Practice Direction 30 and CPR 30.3(a)) ,br />b) the complexity of the issues (para 9.1(2)(b) Practice Direction 30 and CPR 30.3(d))
c) the estimated length of the trial. (Para 9.1(2)(c) Practice Direction 30). Related to this is CPR 30.3(b) – whether it would be more convenient or fair for hearings (including the trial) to be held in some other court.
iii) the importance of the outcome of the claim to the public in general (CPR 30.3(e)) albeit that a case raising an important question of fact or law need not necessarily be transferred to the Patents Court (s289(2) 1988 Act).
A factor which does not play a role is the one in CPR Pt 30.3(c) (availability of a judge specialising in the type of claim in question) since specialist judges are available in both courts.
Once those factors are considered I must bear in mind what sort of cases the Patents County Court was established to handle and that its role is to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. The decision turns on what the interests of justice require, taking into account both parties interests and interests of other litigants.’

Judges:

Birss QC HHJ

Citations:

[2010] EWPCC 14, [2011] FSR 13

Links:

Bailii

Statutes:

County Courts Act 1984 42, Copyright Designs and Patents Act 1988 289(2)

Jurisdiction:

England and Wales

Cited by:

Explained – Comic Enterprises Ltd v Twentieth Century Fox Film Corp PCC 22-Mar-2012
Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions . .
Cited – 77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 26 August 2022; Ref: scu.425825

Strategi Group v OHMI – RBI (Strategi): ECFI 5 Oct 2010

ECFI Community trade mark – Opposition proceedings – Application for the Community word mark STRATEGI – Earlier national word mark Strategies – Relative ground for refusal – Proof of use of the earlier trade mark – Article 43(2) of Regulation (EC) No 40/94 (now Article 42(2) of Regulation (EC) No 207/2009) and Rule 22 of Regulation (EC) No 2868/95.

Citations:

T-92/09, [2010] EUECJ T-92/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 26 August 2022; Ref: scu.425297

Honda Motor Co Ltd and Another v Neesam and Others: ChD 28 Feb 2008

This case is about parallel importation of Honda motorcycles into the United Kingdom by KJM and their resale on the domestic market. The case is specifically about whether KJM’s resales of certain motorcycles have been in breach of provisions of the Trade Marks Act 1994.

Judges:

Sir Andrew Park

Citations:

[2008] EWHC 338 (Ch), [2008] RPC 32

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 August 2022; Ref: scu.396455

Nike International Ltd, Avar, Grove, Kilgore and Friton (Patent): IPO 6 Sep 2013

IPO An uncontested application was filed by Nike International Ltd under rule 10(2) of the Patents Rules 2007. As a result, it was found that both Bruce J. Kilgore and Michael R. Friton should be mentioned as joint inventors along with Eric P. Avar and James A. Grove in the granted patent for the invention and directed that an addendum slip mentioning them as joint inventors be prepared for the granted patent for the invention.

Judges:

Mr A R Bushell

Citations:

O/361/13, [2013] UKIntelP o36113, EP 1587385

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 26 August 2022; Ref: scu.517186

Shanks v Unilever Plc and Others: PatC 23 May 2014

The claimant sought statutory compensation, having whilst employee of the defendant, created a pump which came to widely used in the testing of diabetic status.

Judges:

Arnold J

Citations:

[2014] EWHC 1647 (Pat), [2014] RPC 29, [2014] WLR(D) 242

Links:

Bailii, WLRD

Statutes:

Patents Act 1977 41(1)

Jurisdiction:

England and Wales

Citing:

See Also – Shanks v Unilever Plc and Others ChD 3-Dec-2009
Appeal against refusal to admit supplementary statement of case. The claimant had, while employed by the defendant created a pump which came to be widely used in the management of diabetes. He was seeking recompense for his contribution. . .

Cited by:

Appeal from – Shanks v Unilever Plc and Others CA 17-Jun-2015
Renewed application for leave to appeal against rejection of employee’s invention compensation claim. . .
Appeal from – Shanks v Unilever Plc and Others CA 18-Jan-2017
The claimant professor had invented a pump mechanism which came to be used by his employers for the sale of pumps used to manage diabetic testing. He appealed against refusal of statutory compensation. . .
At PatC – Shanks v Unilever Plc and Others SC 23-Oct-2019
The claimant appealed from refusal of statutory compensation under the 1977 Act. He had invented a form of pump which was used by his employers, the respondents in the management of diabetes management.
Held: The appeal succeeded: ‘the correct . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 26 August 2022; Ref: scu.533186

OCH-Ziff Management Europe Ltd and Another v OCH Capital Llp and Another: ChD 20 Oct 2010

The court considered the vaule of evidence of ‘initial interest’ confusion in passing off and trade mark infringement cases.

Judges:

Arnold J

Citations:

[2010] EWHC 2599 (Ch), [2011] FSR 11, [2011] ECC 5, [2011] ETMR 1, [2010] All ER (D) 07

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

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.

Intellectual Property

Updated: 25 August 2022; Ref: scu.425359

Granuband v OHMI – Granuflex (Granuflex) (Intellectual Property): ECFI 30 Sep 2010

ECFI Community trade mark – Invalidity proceedings – Community figurative mark Granuflex – Legal and Operating Name Previous Granuflex – Relative ground for refusal – Article 8, paragraph 4, Article 52, paragraph 1, sub c) of Regulation (EC) No. 40/94 [now Article 8, paragraph 4, Article 53, paragraph 1, sub c) of Regulation (EC) No 207/2009].

Citations:

T-534/08, [2010] EUECJ T-534/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 25 August 2022; Ref: scu.425264

Bezpecnostni Softwarova Asociace – Svaz Softwarove Ochrany: ECJ 14 Oct 2010

ECJ Opinion – Intellectual Property – Directive 91/250/EEC – Legal protection of computer programs – Definition of ‘all forms of expression of a computer program’ – Inclusion of the GUI program – Copyright – Directive 2001/29/EC – Copyright and Related Rights in the Information Society – Television broadcasting of a graphical user interface – to communicate a work to the public.
Bot AG recognised that the development of an interface required considerable intellectual effort on the part of its developer. That intellectual effort included using a programming language to create a complex structure. But that did not necessarily mean that the product of that intellectual effort qualified for copyright protection. He continued: ‘The difficulty as regards determination of the originality of the graphic user interface lies in the fact that the majority of the elements which comprise it have a functional purpose, since they are intended to facilitate the use of the computer program. Accordingly, the manner in which those elements are expressed can be only limited since, as the Commission stated in its written submissions, the expression is dictated by the technical function which those elements fulfil. Such is the case, for example, of the mouse which moves the cursor across the screen, pointing at the command button in order to make it operate or of the drop-down menu which appears when a text file is open.
In such cases, it seems to me that the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable. If such a possibility was offered, it would have the consequence of conferring a monopoly on certain companies on the computer program market, thus significantly hampering creation and innovation on that market, which would run contrary to the objective of Directive 2001/29.’

Judges:

Bot AG

Citations:

C-393/09, [2010] EUECJ C-393/09

Links:

Bailii

Statutes:

Directive 91/250/EEC

Cited by:

Opinion – Bezpecnostni Softwarova Asociace – Svaz Softwarove Ochrany ECJ 22-Dec-2010
ECJ Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Notion of ‘expression in any form of a computer program’ – Inclusion or non-inclusion of a program’s graphic user . .
Cited – SAS Institute Inc v World Programming Ltd CA 21-Nov-2013
The court was asked as to the extent to which the developer of a computer program may lawfully replicate the functions of an existing computer program; and the materials that he may lawfully use for that purpose. SAS had produced a computer software . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 25 August 2022; Ref: scu.425278

Evets v OHIM (Intellectual Property): ECJ 30 Sep 2010

ECJ Appeal – Community trade mark – Word mark DANELECTRO – Figurative mark QWIK TUNE – Request for renewal of registration of the trade mark – Application for restitutio in integrum – Failure to observe the time-limit for submitting the request for renewal of registration of the trade mark.

Citations:

C-479/09, [2010] EUECJ C-479/09

Links:

Bailii

Jurisdiction:

European

European, Intellectual Property

Updated: 25 August 2022; Ref: scu.425263

PVS v OHMI – Medita Medizinischer Kurierdienst (Medidata) (Intellectual Property): ECFI 30 Sep 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative Medidata – Earlier national word mark Medite – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Similarity of services – Article 8, paragraph 1 b) of Regulation (EC) No 40/94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009].

Citations:

T-270/09, [2010] EUECJ T-270/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 25 August 2022; Ref: scu.425267

Splain, Regina v: CACD 12 Jan 2010

The defendant appealed against an order made for payment of all the prosecutor’s costs in full on his conviction for only some of the trade mark offences prosecuted against him.
Held: Where a defendant has been convicted on only some of several counts, it is wrong to order him to pay the whole of the prosecution costs. However, a mathematical approach was not required

Judges:

Maurice Kay LJ, David Clarke, Sharp JJ

Citations:

[2010] Cost L 465, [2010] EWCA Crim 49

Links:

Bailii

Statutes:

Trade Marks Act 1994

Citing:

Cited – B and Q Plc, Regina v CACD 27-Sep-2005
The defendant company appealed against its conviction for a breach of the 1974 Act, arising from a fatal accident to a customer at retail premises. There had been a substantial contested trial. The appellants were convicted of some of the counts on . .
Lists of cited by and citing cases may be incomplete.

Crime, Intellectual Property

Updated: 25 August 2022; Ref: scu.425194

Novartis Ag and Another v Johnson and Johnson Medical Ltd and Another: CA 29 Sep 2010

Judges:

Ward, Jacob, Patten LJJ

Citations:

[2010] EWCA Civ 1039

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Novartis Ag and Another v Johnson and Johnson Medical Ltd and Others PatC 29-Jul-2009
The court held that although JandJ’s Oasys contact lenses fall within the scope of claims 1 and 24 of Novartis’ EP (UK) No. 0,819,258, the Patent was invalid. The ground of invalidity was insufficiency (patent law jargon for failure to comply with . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 25 August 2022; Ref: scu.424798

Villa Alme v Ohmi – Marques De Murrieta (I Gai) (Intellectual Property) French Text: ECFI 21 Sep 2010

ECFI Community trade mark – Opposition proceedings – Application for Community figurative i GAI – YGAY national word mark and trade marks and figurative Marques de Murrieta YGAY – Relative grounds for refusal – Genuine use of earlier mark – Article 43, paragraphs 2 and 3 of Regulation (EC) No 40/94 [now Article 42, paragraphs 2 and 3 of Regulation (EC) No 207/2009] – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation No. 40/94 [now Article 8, paragraph 1 b) of Regulation No 207/2009].

Citations:

T-546/08, [2010] EUECJ T-546/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 24 August 2022; Ref: scu.424772

Abbott Laboratories v OHMI – Arigen (Sorvir): ECFI 13 Sep 2010

ECFI Community trade mark – Opposition proceedings – Application for Community word mark Sorvir – Earlier Community word mark NORVIR – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).

Citations:

T-149/08, [2010] EUECJ T-149/08

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.424150

Anheuser-Busch v Budejovicky Budvar: ECJ 14 Sep 2010

ECJ (Opinion) Appeal – Community trade mark – Article 8(4) of Regulation No 40/94 – Opposition by the proprietor of the appellation of origin Bud – Use in the course of trade – Sign of more than mere local significance.

Judges:

Cruz Villalon AG

Citations:

C-96/09, [2010] EUECJ C-96/09 – O

Links:

Bailii

Statutes:

Regulation No 40/94 8(4)

Cited by:

Opinion – Anheuser-Busch v Budejovicky Budvar ECJ 29-Mar-2011
ECJ Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(4) – Application for registration of the word and figurative mark BUD – Opposition – Indication of geographical origin ‘bud’ – Protection . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.424152

Monsanto Technology LLC v Cefetra BV, Cefetra Feed Service BV, Cefetra Futures BV, Alfred C. Toepfer International GmbH, Intervener in support of the defendant: Argentine State: ECJ 6 Jul 2010

Europa Industrial and commercial property – Legal protection of biotechnological inventions – Directive 98/44/EC – Article 9 – Patent protecting a product containing or consisting of genetic information – Material incorporating the product – Protection – Conditions.

Citations:

[2010] EUECJ C-428/08

Links:

Bailii

Statutes:

Directive 98/44/EC 9

Citing:

See Also – Monsanto Technology (Industrial Policy) ECJ 9-Mar-2010
Europa Legal protection of biotechnological inventions – Directive 98/44/EC – Patent for genetic information. . .
Lists of cited by and citing cases may be incomplete.

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.424099

Nadine Trautwein Rolf Trautwein v OHIM (Hunter) (Intellectual Property): ECFI 9 Sep 2010

ECJ Community trade mark – Application for Community word Hunter – Absolute ground for refusal – Descriptive character – Article 7, paragraph 1 c) of Regulation (EC) No 40/94 [now Article 7, paragraph 1 c) of Regulation (EC) No 207/2009] – Limitation of goods listed in the trademark application.

Citations:

T-505/08, [2010] EUECJ T-505/08

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 24 August 2022; Ref: scu.423797

Kido v OHMI – Amberes (Scorpionexo) (Intellectual Property): ECFI 8 Sep 2010

Europa Community trade mark – Opposition proceedings – Application for Community word mark ScorpionExo – Earlier national figurative mark Escorpion – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) of Regulation (EC) N – 40 / 94 [now Article 8, paragraph 1 b) of Regulation (EC) No 207/2009].

Citations:

T-152/08, [2010] EUECJ T-152/08

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.423795

Quinta Do Portal v Ohmi – Vallegre (Porto Alegre) (Intellectual Property): ECFI 8 Sep 2010

Europa Community trade mark – annulment procedure – Community word mark PORTO ALEGRE – Earlier national word mark VISTA ALEGRE – Relative ground for refusal – Likelihood of confusion – Article 8, paragraph 1 b) and Article 53, paragraph 1 a) of Regulation (EC) No 207/2009.

Citations:

T-369/09, [2010] EUECJ T-369/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.423799

ADP Gauselmann v OHMI – Maclean (Archer Maclean’s Mercury): ECFI 9 Sep 2010

Europa Community trade mark – Opposition proceedings – Application for the Community figurative mark Archer Maclean’s Mercury – Earlier national word mark Merkur – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).

Citations:

T-106/09, [2010] EUECJ T-106/09

Links:

Bailii

Statutes:

Regulation (EC) No 207/2009

European, Intellectual Property

Updated: 24 August 2022; Ref: scu.423789

Shanks v Unilever Plc and Others: ChD 3 Dec 2009

Appeal against refusal to admit supplementary statement of case. The claimant had, while employed by the defendant created a pump which came to be widely used in the management of diabetes. He was seeking recompense for his contribution.

Judges:

Mann J

Citations:

[2009] EWHC 3164 (Ch), [2010] RPC 11, [2010] Bus LR 761, (2010) 33(2) IPD 33012

Links:

Bailii

Statutes:

Patents Act 1977 40 41(2)

Jurisdiction:

England and Wales

Cited by:

See Also – Shanks v Unilever Plc and Others PatC 23-May-2014
The claimant sought statutory compensation, having whilst employee of the defendant, created a pump which came to widely used in the testing of diabetic status. . .
At Chd (1) – Shanks v Unilever Plc and Others CA 17-Jun-2015
Renewed application for leave to appeal against rejection of employee’s invention compensation claim. . .
At ChD (1) – Shanks v Unilever Plc and Others CA 18-Jan-2017
The claimant professor had invented a pump mechanism which came to be used by his employers for the sale of pumps used to manage diabetic testing. He appealed against refusal of statutory compensation. . .
At ChD (1) – Shanks v Unilever Plc and Others SC 23-Oct-2019
The claimant appealed from refusal of statutory compensation under the 1977 Act. He had invented a form of pump which was used by his employers, the respondents in the management of diabetes management.
Held: The appeal succeeded: ‘the correct . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 24 August 2022; Ref: scu.381740

eFax Com Inc v Oglesby: ChD 25 Jan 2000

The claimant, an American company claimed in passing off against the defendant. It had come into the UK market and established a free service under the name. The defendant had operated a paid for service under the same name from some time before.
Held: The claim should proceed, but an interim injunction was refused. In passing off, the words claimed to establish a reputation in the goods had to be more than descriptive. Words which might once have been distinctive could become descriptive by general usage, as had happened in this case. The common stock of language conception was becoming increasingly difficult to apply. Here the use of the word ‘efax’ had become descriptive. Any confusion or association between the two companies arose from the common meaning of the words and not from any reputation in the name belonging to the claimant.

Judges:

Parker J

Citations:

Times 16-Mar-2000, Unreported, 25 January 2000

Jurisdiction:

England and Wales

Intellectual Property

Updated: 24 August 2022; Ref: scu.80268

Oracle America Inc v M-Tech Data Ltd and Another: CA 24 Aug 2010

The claimant sought to prevent import from China of its own second hand computer disc drives said to infringe its trade marks. It had granted an exclusive licence for the sale of its equipment in Europe and alleged that this was a parallel import. The defendant proposed defences under European law regarding the non-publication of serial mark trackers, abuse of article 5TMD rights, and breach of competition restrictions (81EC).
Held: The defendant’s appeal against summary judgment succeeded. The claimant’s description of the position between the infringement proceedings and the agreements with distributors and resellers as ‘a complete disconnect’ did not take account of the defendant’s allegation that the agreements with distributors and resellers form part of an overall scheme for excluding secondary traders from the market. The Court of Justice had not so far held that Article 81 cannot be used in trade mark cases.

Judges:

Neuberger LJ MR, Arden, Tomlinson LJJ

Citations:

[2010] EWCA Civ 997, [2010] ETMR 64, [2011] FSR 2, [2011] ECC 4, [2011] Eu LR 117

Links:

Bailii

Statutes:

EC Treaty 28 30 81EC, Directive 89/104/EC 5 7

Jurisdiction:

England and Wales

Citing:

Appeal from – Sun Microsystems Inc v M-Tech Data Ltd and Another PatC 25-Nov-2009
The claimant manufactured computer disk drives, marketing them under its trade marks. It complained that the defendant had resold them within the European Economic Area in breach of its rights.
Held: Summary judgment was granted, and an order . .
Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Bristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
Cited – Pharmacia and Upjohn SA, formerly Upjohn SA v Paranova A/S ECJ 12-Oct-1999
ECJ Trade-mark rights – Pharmaceutical products – Parallel imports – Replacement of a trade mark. . .
Cited – Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another ECJ 8-Apr-2003
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving . .

Cited by:

Appeal From – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 22 August 2022; Ref: scu.421587

Hudson Bay Apparel Brands Llc v Umbro International Ltd: CA 11 Aug 2010

The parties disputed the operation of contracts under which the respondent licensed various football associated apparel for sale by the appellant.

Judges:

Lord Neuberger MR, Arden, Tomlinson LJJ

Citations:

[2010] EWCA Civ 949

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Appeal from – Hudson Bay Apparel Brands Llc v Umbro International Ltd ChD 4-Nov-2009
. .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 22 August 2022; Ref: scu.421557

Exalation v OHIM (Vektor-Lycopin): ECFI 9 Jul 2010

ECJ Community trade mark – Application for Community word mark Vektor-Lycopin – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) of Regulation (EC) No 207/2009).

Citations:

T-85/08, [2010] EUECJ T-85/08

Links:

Bailii

European, Intellectual Property

Updated: 22 August 2022; Ref: scu.421308

Anheuser-Busch v OHIM: ECJ 29 Jul 2010

ECJ Appeals – Community trade mark – Regulation (EC) No 40/94 – Application for registration of the word mark BUDWEISER – Opposition – Article 8(1)(a) and (b) of Regulation No 40/94 – Earlier international word and figurative marks BUDWEISER and Budweiser Budvar – Genuine use of the earlier trade mark – Article 43(2) and (3) of Regulation No 40/94 – Submission of evidence ‘in due time’ – Certificate of renewal for the earlier mark – Article 74(2) of Regulation No 40/94.

Citations:

[2010] EUECJ C-214/09

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 22 August 2022; Ref: scu.421301

Sun Microsystems Inc v M-Tech Data Ltd and Another: PatC 25 Nov 2009

The claimant manufactured computer disk drives, marketing them under its trade marks. It complained that the defendant had resold them within the European Economic Area in breach of its rights.
Held: Summary judgment was granted, and an order made for an inquiry into damages, and an injunction to prevent M-Tech marketing goods if Sun has confirmed that those goods have not previously been put on the EEA market by Sun or with Sun’s consent.

Judges:

Kitchin J

Citations:

[2009] EWHC 2992 (Pat), [2010] 2 CMLR 7, (2010) 33(2) IPD 33010, [2010] ETMR 13, [2010] FSR 9

Links:

Bailii

Statutes:

Directive 89/104/EC 5 7

Jurisdiction:

England and Wales

Cited by:

Appeal from – Oracle America Inc v M-Tech Data Ltd and Another CA 24-Aug-2010
The claimant sought to prevent import from China of its own second hand computer disc drives said to infringe its trade marks. It had granted an exclusive licence for the sale of its equipment in Europe and alleged that this was a parallel import. . .
At First Instance – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 22 August 2022; Ref: scu.421247