The defendant appealed against an order refusing summary relied against a claim for trade mark infringement. The claimant’s drugs were sold internationally, but outside the EU, being sourced in Turkey, and distributed eventually through the defendant’s premises in Slough. The claimant said that there was a pretence that the goods were sourced in the UK. … Continue reading Eli Lilly and Company and Another v 8PM Chemist Ltd: CA 5 Feb 2008
ECJ Trade marks – Directive 89/104/EEC – Regulation (EC) No 40/94 – Rights conferred by the trade mark – Use of the mark in the course of trade – Importation of original goods into the Community – Goods placed under the external transit procedure or the customs warehousing procedure – Opposition of the trade mark … Continue reading Class International v Colgate Palmolive: ECJ 18 Oct 2005
ECJ Judgment -Reference for a preliminary ruling – Trade marks – Directive 89/104/EEC – Article 5 – Products bearing a trade mark released for free circulation and placed under the duty suspension arrangement without the consent of the proprietor of the trade mark – Right of that proprietor to oppose that placing – Definition of … Continue reading Top Logistics And Others v Bacardi and Company Ltd and Others: ECJ 16 Jul 2015
Interflora complaned that the defendant, in order to advertise its flower delivery service, had paid a third party search engine, usin the claimant’s trade marks to attract traffic. Held: In such a claim, it was not enough to show use of the mark. A claimant had, in addition, to show that a reasonably informed user … Continue reading Interflora Inc and Another v Marks and Spencer Plc: CA 5 Nov 2014
The defendant objected to the introduction of certain evidence by the claimant under a Civil Evidence Act notice. Claimants seeking to adduce academic journals as expert evidence Arnold J  EWHC 936 (Ch),  WLR(D) 183 Bailii, WLRD Civil Procedure Rules 35 England and Wales Citing: See Also – Interflora Inc and Another v Marks … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 15 Apr 2013
ECJ Trade marks Directive 89/104/EEC Articles 10 and 12 Revocation Concept of ‘genuine use’ of a mark Affixing the mark to promotional items Distribution of such items free of charge to the purchasers of goods sold by the mark’s proprietor. C-495/07,  EUECJ C-495/07,  WLR(D) 6 Bailii, WLRD European, Intellectual Property Leading Case Updated: … Continue reading Silberquelle GmbH v Maselli-Strickmode GmbH (Approximation of Laws): ECJ 15 Jan 2009
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts below held, such a claimant must also establish a business with customers within the … Continue reading Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others: SC 13 May 2015
Europa Trade marks – Directive 89/104/EEC – Trade marks in respect of services – Registration – Services provided in connection with retail trade – Specification of content of services – Similarity between the . .
Europa Trade marks – Directive 89/104/EEC – Absence of distinctive character – Distinctive character acquired through use – Use as part of or in conjunction with a registered trade mark.
‘An applicant who . .
Europa Trade marks – Directive 89/104/EEC – Article 6(1)(c) – Limitations on the protection conferred by the trade mark – Use by a third party where it is necessary to indicate the intended purpose of a product . .
The court gave its reasons for allowing the claimant to bring additional witness evidence as to confusion as opposed to survey evidence. . .
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 . .
The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the . .
ECJ Trade marks – Directive 89/104/EEC – Article 5(1)(b) – Filling of cans already bearing a sign similar to a trade mark – Service provided under an order from and on the instructions of another person – Action . .
ECJ Trade marks Articles 5(1)(b), 5(2) and 6(1)(b) of Directive 89/104/EEC Requirement of availability Three-stripe figurative marks Two-stripe motifs used by competitors as decoration Complaint alleging infringement and dilution of the mark. Citations: C-102/07,  EUECJ C-102/07 Links: Bailii Statutes: Directive 89/104/EEC 5(1)(b) 5(2) 6(1)(b) European, Intellectual Property Updated: 14 July 2022; Ref: scu.266937
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability of Article 5(1) of Directive 89/104/EEC – Conditions on which comparative advertising is permitted Whether reference to the competitor’s trade mark indispensable Citations: C-533/06,  … Continue reading O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited: ECJ 31 Jan 2008
Trade marks – Directive 89/104/EEC – Article 5 – Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark – Consent given in a situation where there is shared use – Possibility for that proprietor to put an … Continue reading Martin y Paz Diffusion Sa v David Depuydt: ECJ 19 Sep 2013
Mark use in search engine was infringing use The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use. … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013
ECJ Trade marks Internet Search engine – Keyword advertising – Display, on the basis of keywords corresponding to trade marks, of links to sites of competitors of the proprietors of those marks or to sites . .
ECJ Trade marks – Directive 89/104/EEC – Article 5(1) – Exclusive rights of the trade mark proprietor – Shared use of a trade mark – Consent – Revocation of consent to use a trade mark – Unfair competition . .
The claimant, manufacturers of perfumes, complained that the defendants, manufacturers of smell-alike products, were in breach of the Directive in marketing their products using lists which identified those of the claimants products to which they . .
ECJ Directive 89/104/EEC – Trade-mark law Exhaustion of the rights of the proprietor of the trade mark – Licence agreement – Sale of goods bearing the trade mark in disregard of a clause in the licence agreement – No consent of the proprietor of the mark – Sale to discount stores – Damage to the … Continue reading Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Societe industrielle lingerie (SIL), Societe industrielle lingerie (SIL): ECJ 23 Apr 2009
The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for confusion of marks: ‘i) The likelihood of confusion must be appreciated globally, taking account … Continue reading Julius Samann Ltd and others v Tetrosyl Ltd: ChD 17 Mar 2006
ECJ Opinion – Trade marks of such a nature as to deceive the public or liable to mislead the public as to the nature, quality or geographical origin of a product – Trade mark assigned by the proprietor together with the undertaking producing the goods to which the mark relates – Directive 89/104/EEC. Judges: Ruiz-Jabaro … Continue reading Elizabeth Florence Emanuel v Continental Shelf 128 Ltd (Approximation of Laws): ECJ 30 Mar 2006
ECJ (Judgment) Reference for a preliminary ruling – Article 3(1)(b) and (c) of Directive 89/104/EEC – Grounds for refusal to register – Articles 28 EC and 30 EC – Free movement of goods – Measure having equivalent effect to a quantitative restriction – Justification – Protection of industrial and commercial property – National word mark … Continue reading Matratzen Concord v Hukla Germany SA (Free Movement Of Goods): ECJ 9 Mar 2006
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 cases be sufficient to establish genuine use within the meaning of the Directive, even if … Continue reading La Mer Technology Inc v Laboratoires Goemar SA (Order): ECJ 27 Jan 2004
The several defendants appealed convictions for breaches of section 92 of the Act. Held: The section presumed that a civil infringement of the Trade Mark had taken place. Accordingly any of the defences available to a civil action must be available also against a criminal action. Furthermore there was no conflict between the Act and … Continue reading Regina v Johnstone, etc: CACD 1 Feb 2002
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the appellant set up a company with a similar name and applied for the mark ‘CHINA WHITE’. The … Continue reading Harrison v Teton Valley Trading Co; Harrison’s Trade Mark Application (CHINAWHITE): CA 27 Jul 2004
Judgment – Non-contractual liability – Directive 89/104/EEC – Trade marks – Official euro symbol. Citations: T-195/00,  EUECJ T-195/00 Links: Bailii Jurisdiction: European Intellectual Property Updated: 07 June 2022; Ref: scu.180825
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 exhaustion of rights lay on the defendant, unless he could show that the result would be … Continue reading Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another: ECJ 8 Apr 2003
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance. Held: The function of a trade mark was to guarantee the identity or origin of the goods, … Continue reading Arsenal Football Club plc v Reed: ECJ 12 Nov 2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the design was functional. Held: A sign consisting exclusively of a product’s shape was unregistrable, if it was … Continue reading Koninklijke Philips Electronics NV v Remington Consumer Products Ltd: ECJ 18 Jun 2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied. Held: The prohibition of quantitative restrictions on imports does not preclude restrictions justified on the grounds of the protection of industrial and commercial property. Such … Continue reading Boehringer Ingelheim KG and Others v Swingward Ltd and Another: ECJ 23 Apr 2002
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 implied consent for the resale within the EEA of goods otherwise than in accordance with a licence from … Continue reading Zino Davidoff SA v A and G Imports Ltd etc: ECJ 20 Nov 2001
ECJ Trade marks – Approximation of laws – Article 3(1)(d) of First Directive 89/104/EEC – Grounds for refusal or invalidity – Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade – Need for signs or indications … Continue reading Merz and Krell GmbH and Co: ECJ 4 Oct 2001
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual item in respect of which the exhaustion was pleaded. National rules providing for exhaustion … Continue reading Sebago and Maison Dubois et Fils SA v GB-Unic SA: ECJ 1 Jul 1999
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. Articles 5 to 7 of the directive embody a ‘complete harmonisation’ of the rules … Continue reading Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH: ECJ 16 Jul 1998
The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to the club. The claim of passing off failed because the club had … Continue reading Arsenal Football Club Plc v Reed: ChD 6 Apr 2001
Registration is to be refused in respect of descriptive marks, ie marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for. Article 3(1)(c) therefore prevents descriptive signs and indications from being reserved to one undertaking alone … Continue reading Windsurfing Chiemsee Produktions and Vertriebs GmbH v Boots und Segelzubehor Walter Huber and another: ECJ 4 May 1999
ECJ Trade marks – Keyword advertising on the internet – Directive 89/104/EEC – Articles 5 to 7 – Display of advertisements on the basis of a keyword identical with a trade mark – Display of advertisements on the basis of keywords reproducing a trade mark with ‘minor spelling mistakes’ – Advertising for second-hand goods – … Continue reading Portakabin Ltd, Portakabin BV v Portakabin: ECJ 8 Jul 2010
The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their own pre-emptive campaign. They now admitted misuse of the confidential information acquired. Held: The claim succeeded … Continue reading Specsavers International Healthcare Ltd and Others v Asda Stores Ltd: ChD 30 Jul 2010
Reference for a preliminary ruling – Approximation of laws – Community trade mark – Regulation (EC) No 40/94 – Articles 7 and 51 – First Directive 89/104/EEC – Articles 3 and 13 – Identification of the goods or services covered by the registration – Failure to comply with the requirements of clarity and precision – … Continue reading Sky and Others (Community Trade Mark – Judgment): ECJ 29 Jan 2020
Applications for the registration of three dimensional trade marks had been referred to the court on the question of whether they could be refused for lack of distinctiveness. Held: The tests for three dimensional marks were no more strict than for other marks. When looking at the grounds for refusal, the public interest was to … Continue reading Linde AG, Winward Industries Inc and Rado Uhren AG: ECJ 8 Apr 2003
ECJ Trade marks – Keyword advertising on the internet – Selection by the advertiser of a keyword corresponding to a competitor’s trade mark with a reputation – Directive 89/104/EEC – Article 5(1)(a) and (2) – Regulation (EC) No 40/94 – Article 9(1)(a) and (c) – Condition that one of the trade mark’s functions be adversely … Continue reading Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited: ECJ 22 Sep 2011
ECJ (Opinion) Trade marks – Keyword advertising corresponding to the trade mark of a competitor of the advertiser – Trade marks with a reputation – Blurring – Tarnishment – Free-riding – Directive 89/104 – Article 5(2) – Regulation No 40/94 – Article 9(1)(c). Jaaskinen AG C-323/09,  EUECJ C-323/09 Bailii Directive 89/104 European Citing: Reference … Continue reading Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited: ECJ 24 Mar 2011
The court considered the form of the injunction requested to give effect to the earlier full judgment in the case brought, requiring the defendant to discontinue any use of the terms complained of as infringing the claimant’s registered marks as internet search terms. Arnold J  EWHC 1484 (Ch) Bailii England and Wales Citing: See … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 12 Jun 2013
ECJ Request for a preliminary ruling – Trade marks – Directive 89/104/EEC – Rights conferred by a trade mark – Trade mark with a reputation – Protection extended to non-similar goods or services – Use by a third party, without due cause, of a sign identical with or similar to the trade mark with a … Continue reading Leidseplein Beheer Bv v Red Bull Gmbh: ECJ 6 Feb 2014
ECJ Trade marks Internet Search engine Keyword advertising Display, on the basis of keywords corresponding to trade marks, of links to sites of competitors of the proprietors of those marks or to sites offering imitation goods Directive 89/104/EEC Article 5 Regulation (EC) No 40/94 Article 9 Liability of the search engine operator Directive 2000/31/EC (‘Directive … Continue reading Google France and Google (Intellectual Property): ECJ 23 Mar 2010
The claimant sought an injunction against the defendants to restrain an alleged trade mark infringement in respect of the use of the mark ‘NUDE’ by the proposed product ‘STELLANUDE’. Held: Despite the differences, it was ‘arguable that the sign STELLANUDE is similar to the mark NUDE.’ The case should be allowed to proceed. Floyd J … Continue reading Nude Brands Ltd v Stella McCartney Ltd and Others: ChD 20 Aug 2009
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 information which would allow it to trade lawfully. The Court was now asked: ‘whether a person who … Continue reading Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012
The trade mark owners sought to restrain the defendants from selling within the EU, articles bearing their mark which had been imported other than through their own channels. The defendants resisted summary judgement after reference to the European Court of Justice, on the grounds that the Regulation was invalid as infringing a basic tenet of … Continue reading Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002
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 – Removal of the packaging of the goods – Directive 89/104/EEC – Regulation (EC) No 40/94 – Liability of the … Continue reading 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
hauckECJ0514 ECJ Opinion – Brands – Grounds for refusal or invalidity of registration – Three-dimensional mark consisting of the shape of goods – Directive 89/104/EEC – Article 3, paragraph 1, e), first indent – sign consisting exclusively of the shape which by the nature of the product – Article 3, paragraph 1, e), third indent … Continue reading Hauck GmbH and Co. KG v Stokke A / S: ECJ 14 May 2014
loreal_bellureECJ2009 ECJ Approximation of laws – Trade marks Directive 98/104/EEC Article 5(1)(a) – Use of another person’s trade mark for identical goods in comparative advertising Article 5(2) – Unfair advantage taken of the reputation of a trade mark – Comparative advertising Directives 84/450/EEC and 97/55/EEC Article 3a(1) – Conditions under which comparative advertising is permitted … Continue reading L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoires Garnier and Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd: ECJ 18 Jun 2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced references also to the defendants’ web-sites. The bids for these words … Continue reading Interflora, Inc and Another v Marks and Spencer Plc and Another: ChD 22 May 2009
Interflora had been refused permision to adduce survey evidence, but now appealed against refusal of permission to adduce evidence of confusion by witness statements.
Held: Appeal allowed. Reasons to follow. . .
‘The Claimants (‘Interflora’) seek the permission of the Court to adduce in evidence the witness statements of 13 witnesses at the trial of this action scheduled for mid April 2013. Interflora do not accept that they need the Court’s permission, but . .
Europa Directive 89/104/EEC Trade marks Article 4(4)(a) Trade marks with a reputation – Protection against the use of a later identical or similar mark Use which takes or would take unfair advantage of, or is or . .
Trade marks – Directive 89/104/EEC – Article 7(2) – Exhaustion of the rights conferred by the trade mark – Pharmaceutical products – Parallel importation – Repackaging of the trade-marked product . .
Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a . .
Trade marks – Directive 89/104/EEC – Article 12(2)(a) – Revocation of rights conferred by the trade mark – Trade mark which has become the common name in the trade – Relevant circles for purposes of the assessment . .
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.
Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have . .
Application for permission to to adduce witness evidence at trial from witnesses gathered from two pilot surveys. . .
The defendant appealed summary judgment in a trade mark infringement case based on parallel imports of ACCU-CHEK blood testing strips for diabetics. The defendant said that the products were ‘CE’ marked and therefore intended for sale within the EU. . .
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
Nokia sought judicial review of a decision of the Commissioners to release a consignment of goods which it said were infringing counterfeits of its own models. The Commissioners said that in the absence of evidence that they were intended for . .
The appellant had sought to register as a trade mark the shape of a polo mint. The objector said it lacked sufficient distinctive character. The appellant sought to amend the specification of the trade mark to limit its application as to the goods . .
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
Response to request for clarification of reference to the ECJ. . .
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
ECJ Directive 89/104/EEC – Trade mark – Right of the proprietor of a registered trade mark to oppose the illegal use of its mark – Use of a sign – Definition – Filling cans on behalf of third – Export Products – . .
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 . .