Tag: Intellectual Property

Quama Quality Management v EUIPO: ECJ 3 May 2018

Appeal – Eu Trade Mark – Opinion – Appeal – EU trade mark – Regulation (EC) No 207/2009 – Regulation (EC) No 2868/95 – Notice of opposition filed by the proprietor of the earlier mark – Entitlement to file a notice of opposition – Registration procedure for the transfer of the earlier mark to a new proprietor – Appeal inadmissible in part and unfounded in part

Citations:

ECLI:EU:C:2018:304, [2018] EUECJ C-139/17P – O

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609518

J-M-EV E Hijos v EUIPO – Masi (Massi): ECFI 3 May 2018

(Eu Trade Mark – Judgment) EU trade mark – Invalidity proceedings – Application for registration of the EU word mark MASSI – Earlier national word mark MASI – Article 56(3) of Regulation (EC) No 207/2009 (now Article 63(3) of Regulation (EU) 2017/1001) – Res judicata – Article 53(1)(a) and Article 8(2)(c) of Regulation No 207/2009 (now Article 60(1)(a) and Article 8(2)(c) of Regulation 2017/1001) – Well-known mark within the meaning of Article 6bis of the Paris Convention

Citations:

ECLI:EU:T:2018:243, [2018] EUECJ T-2/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609512

El Corte Ingles v EUIPO – We Brand (EW): ECFI 4 May 2018

EU Trade Mark – Judgment- EU trade mark – Opposition proceedings – Application for the EU figurative mark EW – Earlier EU word mark WE – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:255, [2018] EUECJ T-241/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609507

Ceramtec v EUIPO – C5 Medical Werks (Forme D’Une Piece de Prothese de Hanche): ECFI 3 May 2018

EU Trade Mark – Judgment – EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of a part of a prosthetic hip – Figurative EU trade mark representing a part of a prosthetic hip – EU trade mark consisting in a shade of pink – Withdrawal of applications for declarations of invalidity and closure of the invalidity proceedings – Action of the proprietor of the mark seeking the annulment of decisions closing proceedings – Inadmissibility of action before the Board of Appeal – Article 59 of Regulation (EC) No 207/2009 (now Article 67 of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:248, [2018] EUECJ T-193/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609505

Bernard Krone Holding v EUIPO (Mega Liner): ECFI 4 May 2018

Judgment – Trademark of the European Union – Trademark application of the European Union verbal Mega Liner – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Article 7 (1) (b) and (c) of Regulation (EC) ) No 207/2009 [now Article 7 (1) (b) and (c) of Regulation (EU) 2017/1001) – Obligation to state reasons – Article 75, first sentence, of Regulation No 207/2009 (now Article 94 , paragraph 1 of Regulation 2017/1001)

Citations:

ECLI : EU: T: 2018 254, [2018] EUECJ T-187/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609504

Walfood v EUIPO – Romanov Holding (Chatka) T-248/16: ECFI 25 Apr 2018

Judgment – European Union mark – Procedural invalidity – European Union figurative mark CHATKA – Earlier international figurative mark CHATKA – Relative ground for refusal – Article 8 (1) (b) of Regulation (EC) No 207 / 2009 [now Article 8 (1) (b) of Regulation (EU) 2017/1001] – Serious use of the earlier mark – Article 57 (2) and (3) of Regulation No 207/2009 (now Article 64) paragraphs 2 and 3 of Regulation 2017/1001)

Citations:

ECLI:EU:T:2018:222, [2018] EUECJ T-248/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609334

Senetic v EUIPO – HP Hewlett Packard Group (HP) T-207/17: ECFI 24 Apr 2018

ECJ Intellectual, Industrial and Commercial Property – Judgment – EU trade mark – Invalidity proceedings – EU figurative mark hp – Absolute grounds for refusal – Article 52(1)(a) of Regulation (EC) No 207/2009 (now Article 59(1)(a) of Regulation (EU) 2017/1001) – Descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001) – No distinctive character – Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) – Bad faith – Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001)

Citations:

ECLI:EU:T:2018:215, [2018] EUECJ T-207/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609326

Menta Y Limon Decoracion v EUIPO -Ayuntamiento De Santa Cruz De La Palma(Representation D’Un Homme En Costume Regional): ECFI 24 Apr 2018

Intellectual, Industrial and Commercial Property – Judgment – Trade mark of the European Union – Annulment proceedings – Representation of the figurative European Union representing a man in regional costume – Previous national industrial designs – Relative ground for refusal – Article 53 (2) (d) of Regulation (EC) ) No 207/2009 [now Article 60 (2) (d) of Regulation (EU) 2017/1001) – Prohibition of the use of the European Union trade mark under national law – Application of national law by EUIPO

Citations:

ECLI:EU:T:2018:213, [2018] EUECJ T-183/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609316

Country North Rhine-Westphalia v Renckhoff: ECJ 25 Apr 2018

ECJ Opinion – Reference for a preliminary ruling – Copyright and related rights in the information society – Concept of’ communication to the public ‘- Making available on a website a protected work accessible to all Internet users on another Internet site – Situation in which the work has been copied to a server without the consent of the owner of the copyright

Citations:

ECLI:EU:C:2018:279, [2018] EUECJ C-161/17 – O

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609324

Kabushiki Kaisha Zoom v EUIPO – Leedsworld (Zoom): ECFI 24 Apr 2018

Intellectual, Industrial and Commercial Property – Judgment – (EU trade mark – Opposition proceedings – Application for EU word mark ZOOM – Earlier EU figurative and word marks ZOOM – Relative ground for refusal – Likelihood of confusion – Similarity of goods – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:218, [2018] EUECJ T-831/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609314

Romantik Hotels and Restaurants v EUIPO – Hotel Preidlhof (Romantik): ECFI 25 Apr 2018

ECJ Judgment – Trade mark of the European Union – Annulment proceedings – European Union word mark ROMANTIK – Absolute ground for refusal – Lack of distinctive character – Lack of distinctive character acquired through use – Article 7 (1) (b)) and paragraph 3 of Regulation (EC) No 207/2009 (now Article 7 (1) (b) and (3) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:225, [2018] EUECJ T-213/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609325

Messi Cuccittini v EUIPO – J-M-Ev E Hijos (Messi): ECFI 26 Apr 2018

Judgment – Trademark of the European Union – Opposition proceedings – Application for a mark of the figurative European Union MESSI – Earlier European Union word marks MASSI – Relative ground for refusal – Likelihood of confusion – Article 8 (1) under (b) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:230, [2018] EUECJ T-554/14

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609317

Pfalzmarkt Fur Obst Und Gemuse v EUIPO (100% Pfalz): ECFI 26 Apr 2018

Judgment – European Union mark – Application for a mark of the European Union figurative 100% Pfalz – Absolute ground for refusal – Article 7 (1) (c) of Regulation (EC) No 207/2009 [now Article 7, paragraph 1 (c) of Regulation (EU) 2017/1001) – Obligation to state reasons – Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001)

Citations:

, ECLI:EU:T:2018:229, [2018] EUECJ T-220/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609322

VSM v EUIPO (We Know Abrasives): ECFI 24 Apr 2018

ECJ Intellectual, Industrial and Commercial Property – Judgment – Trademark of the European Union – Trademark application of the European Union verbale WE KNOW ABRASIVES – Trademark consisting of an advertising slogan – Competence of the Board of Appeal in the case of limited use of part of the services covered by the application registration – Article 64 (1) of Regulation (EC) No 207/2009 [now Article 71 (1) of Regulation (EU) 2017/1001) – Absolute ground for refusal – Lack of distinctive character – Article 7 (1) 1 (b) of Regulation No 207/2009 [now Article 7 (1) (b) of Regulation 2017/1001)

Citations:

ECLI:EU:T:2018:217, [2018] EUECJ T-297/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609332

Mitsubishi Shoji Kaisha and Mitsubishi Caterpillar Forklift Europe: ECJ 26 Apr 2018

Intellectual, Industrial and Commercial Property – Opinion – Reference for a preliminary ruling – European Union trademark – Rights conferred by the trade mark – Parallel imports in the EEA – Remarks of products prior to their importation into the EEA

Citations:

ECLI:EU:C:2018:292, [2018] EUECJ C-129/17 – O

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609318

Senetic v EUIPO – HP Hewlett Packard Group (HP) T-208/17: ECFI 24 Apr 2018

Intellectual, Industrial and Commercial Property – Judgment – EU trade mark – Invalidity proceedings – EU word mark HP – Absolute grounds for refusal – Article 52(1)(a) of Regulation (EC) No 207/2009 (now Article 59(1)(a) of Regulation (EU) 2017/1001) – Descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001) – No distinctive character – Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) – Bad faith – Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001)

Citations:

ECLI:EU:T:2018:216, [2018] EUECJ T-208/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609327

Teva UK and Others v Gilead Sciences Inc: ECJ 25 Apr 2018

ECJ Patent Law – Supplementary Protection Certificate for Medicinal Products – Opinion – Request for a preliminary ruling – Approximation of laws – Patent law – Supplementary protection certificate for medicinal products – Regulation (EC) No 469/2009 – Article 3(a) – Conditions for obtaining – Product protected by a basic patent in force – Criteria for assessment

Citations:

ECLI:EU:C:2018:278, [2018] EUECJ C-121/17 – O

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609329

Memora Servicios Funerarios v Euipo – Chatenoud (Memorame): ECFI 24 Apr 2018

Intellectual, Industrial and Commercial Property – Judgment – Trademark of the European Union – Opposition proceedings – Trademark application of the European Union verb MEMORAME – Trademarks of the European Union figurative earlier memorials and national earlier ones MEMORA – Relative ground for refusal – Likelihood of confusion – Similarity of products and services – Article 8 (1) (b) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:214, [2018] EUECJ T-221/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609315

Perfumes Y Aromas Artesanales v EUIPO – Aromas Selective (Aa Aromas Artesanales): ECFI 25 Apr 2018

Judgment – Trade mark of the European Union – Opposition proceedings – Application for a mark of the European figurative union AA AROMAS artesanales – Earlier figurative European Union trade mark Aromas PERFUMARIA Beleza em todos os sentidos – Relative ground for refusal – Likelihood of confusion – Identity or similarity of services – Similarity of the signs – Relevant public – Article 8 (1) (b) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) of Regulation (EU) 2017/1001]

Citations:

ECLI:EU:T:2018:223, [2018] EUECJ T-426/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609321

Convivo v EUIPO – Porcesadora Nacional De Alimentos (M’Cooky): ECFI 26 Apr 2018

Eu Trade Mark – Judgment – Opposition proceedings -International registration designating the European Union – Word mark M’Cooky – Earlier national figurative mark MR.COOK – Relative ground for refusal – Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) – Likelihood of confusion)

Citations:

ECLI:EU:T:2018:231, [2018] EUECJ T-288/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609303

Genomic Health v EUIPO (Oncotype Dx Genomic Prostate Score): ECFI 23 Apr 2018

Intellectual, Industrial and Commercial Property – Judgment – EU trade mark – Application for EU word mark ONCOTYPE DX GENOMIC PROSTATE SCORE – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – Equal treatment

Citations:

ECLI:EU:T:2018:212, [2018] EUECJ T-354/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609309

Euro Castor Green v EUIPO – Netlon France (Treillage Occultant): ECFI 25 Apr 2018

Judgment- Community design – Procedures for invalidity – Registered Community design representing trellis – Previous Community design – Reason of invalidity – Disclosure of earlier design – No novelty – No individual character – Articles 5, 6 and 6 Article 25 (1) (b) of Regulation (EC) No 6/2002

Citations:

ECLI:EU:T:2018:224, [2018] EUECJ T-756/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 14 April 2022; Ref: scu.609307

Solen Cikolata Gida Sanayi Ve Ticaret v EUIPO – Zaharieva (Bobo Cornet): ECFI 17 Apr 2018

Eu Trade Mark – Judgment – EU trade mark – Opposition proceedings – Application for registration of EU figurative mark BOBO cornet – Earlier EU figurative mark OZMO cornet – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:194, [2018] EUECJ T-648/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609070

Rintisch v EUIPO – Compagnie Laitiere Europeenne (Proticurd): ECFI 19 Apr 2018

Eu Trade Mark – Judgment – EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark PROTICURD – Earlier national word marks PROTI and PROTIPLUS – Earlier national figurative mark Proti Power – Relative ground for refusal – Obligation to state reasons – Article 75 of Regulation (EC) No 207/2009 (now Article 94 of Regulation (EU) 2017/1001) – Genuine use of the earlier marks – Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) – Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) – Goods not similar – No likelihood of confusion

Citations:

ECLI:EU:T:2018:195, [2018] EUECJ T-25/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609067

Meo – Servicos De Comunicacoes E Multimedia v Autoridade da Concorrencia: ECJ 19 Apr 2018

Competition – Abuse of Dominant Position – Judgment – Reference for a preliminary ruling – Competition – Abuse of dominant position – Article 102, second paragraph, point (c), TFEU – Concept of ‘competitive disadvantage’ – Discriminatory prices on a downstream market – Cooperative for the management of rights relating to copyright – Royalty payable by domestic entities which provide a paid television signal transmission service and television content

Citations:

ECLI:EU:C:2018:270, [2018] EUECJ C-525/16

Links:

Bailii

Jurisdiction:

European

Commercial, Intellectual Property

Updated: 13 April 2022; Ref: scu.609062

Lackmann Fleisch – Und Feinkostfabrik v EUIPO: ECFI 12 Apr 2018

Intellectual, Industrial and Commercial Property – Order – ‘trademark of the European Union – Application for a mark of the figurative European Union Lilep – Absolute ground for refusal – Lack of distinctive character – Article 7 (1) (b) of Regulation (EC) No 207/2009 Article 7 (1) (b) of Regulation (EU) 2017/1001 – Action manifestly devoid of any foundation in law

Citations:

ECLI:EU:T:2018:182, [2018] EUECJ T-386/17 – CO

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609061

Fiesta Hotels and Resorts v EUIPO: ECJ 19 Apr 2018

(Judgment) Appeal – Trade mark of the European Union – Regulation (EC) No 207/2009 – Article 8 (4) – Article 65 – Unregistered trade name GRAND HOTEL PALLADIUM – Figurative mark containing the word elements ‘PALLADIUM PALACE IBIZA RESORT and SPA’ – Application for a declaration of invalidity based on an earlier right acquired under national law – Conditions – Sign whose scope is not only local – Right to prohibit the use of a more recent mark

Citations:

ECLI: EU: C: 2018: 269, [2018] EUECJ C-75/17P

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609055

Holyghost v EUIPO – CBM (Holyghost): ECFI 20 Apr 2018

Judgment – Trade mark of the European Union – Opposition proceedings – Trademark application of the European Union verbal holyGhost – Earlier European Union word mark HOLY – Relative ground for refusal – Likelihood of confusion – Article 8 (1) under (b) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) of Regulation (EU) 2017/1001)

Citations:

ECLI: EU:T:2018:197, [2018] EUECJ T-439/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609059

Peek and Cloppenburg: ECJ 19 Apr 2018

(Trade-Mark Law – Judgment) Reference for a preliminary ruling – Trade-mark law – Directive 2008/95/EC – Article 14 – Establishment a posteriori of the invalidity or revocation of a trade mark – Date on which the conditions for revocation or invalidity must be met – Regulation (EC) No 207/2009 – EU trade mark – Article 34(2) – Claiming the seniority of an earlier national trade mark – Effects of that claim on the earlier national mark

Citations:

C-148/17, [2018] EUECJ C-148/17, ECLI:EU:C:2018:271

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609065

Mitrakos v EUIPO – Belasco Baquedano (Yamas): ECFI 20 Apr 2018

ECJ EU Trade Mark – Judgment – EU trade mark – Opposition proceedings – Application for the EU figurative mark YAMAS – Earlier EU word mark LLAMA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:198, [2018] EUECJ T-15/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609063

Polski Koncern Naftowy Orlen v EUIPO (Forme De Station-Service): ECFI 16 Apr 2018

Trade mark of the European Union – Application for three-dimensional European Union trade marks – Form of service station – Absolute ground for refusal – Distinctiveness – Article 65 (4) of Regulation (EC) No 207/2009 72 (4) of Regulation (EU) 2017/1001) – Acts fully upholding the applicant’s claims – Referral decision of the Board of Appeal – Compelling nature of the grounds for a referral decision – Admissibility – Obligation to motivation

Citations:

T-339/15, [2018] EUECJ T-339/15

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609066

Bielawski v EUIPO (House of Cars): ECFI 17 Apr 2018

Judgment – Trademark of the European Union – Verbal trademark application HOUSE OF CARS – Absolute ground for refusal – Lack of distinctive character – Article 7 (1) (b) of Regulation (EC) No 207/2009 [renumbered as Article 7 (1) (b) of Regulation (EU) 2017/1001) – Legitimate expectations – Legal certainty

Citations:

ECLI:EU:T:2018:193, [2018] EUECJ T-364/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 13 April 2022; Ref: scu.609050

Scandecor Development Ab v Scandecor Marketing Ltd and Another: ChD 9 Mar 1998

A company with same name as a registered trademark could trade under that name provided the use was honest and otherwise within the section.

Citations:

Times 09-Mar-1998, Gazette 25-Mar-1998, [1998] FSR 500

Statutes:

Trade Marks Act 1994 11(2)(a)

Jurisdiction:

England and Wales

Cited by:

Appeal from – Scandecor Development Ab v Scandecor Marketing Ab and Another (No 2) CA 7-Oct-1998
Actions for passing off and Trade Mark infringement tended to end up as factual disputes resolvable only after a full enquiry. ‘Not a branch of law in which references to these cases is of an real assistance.’ . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Company

Updated: 13 April 2022; Ref: scu.89041

Suhner and Co AG v Suhner Ltd: ChD 1967

A Swiss corporation manufacturing electronic components asserted an international reputation and goodwill in the name of ‘Suhner’. The defendants disputed that the plaintiff had goodwill in the United Kingdom. From 1946 until some years thereafter another company was the sole distributor in Great Britain of the plaintiff’s high frequency connectors and cables. That distribution arrangement was initially a direct relationship, but from about 1960 the plaintiff supplied the distributing company with goods to distribute in the United Kingdom through a Swiss associate. In 1967 the distribution arrangement ended and the plaintiff decided to form its own company to distribute its product in the United Kingdom, but found that the defendant company was already registered with the name ‘Suhner’.
Held: Plowman J made no conclusive finding that the plaintiff had goodwill in the UK, but it is clear that its goods had been sold here. An interlocutory injunction was granted estraining the defendant company from remaining registered under its current name.

Judges:

Plowman J

Citations:

[1967] RPC 336

Jurisdiction:

England and Wales

Cited by:

Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 April 2022; Ref: scu.566006

Staywell Hospitality Group Pty Ltd v Starwood Hotels and Resorts Worldwide Inc: 29 Nov 2013

(Singapore – Court of Appeal) The ‘hard-line’ approach to goodwill is the law in Singapore was continued. meaning that a foreign trader who does not conduct any business activity in Singapore will generally not be able to maintain an action in passing off in Singapore. After reviewing the authorities in the UK, Australia and Hong Kong, the Court declined to soften the ‘hard-line’ approach, although it indicated that it might be prepared to do so in some respects if and when the right case came before the court. This approach this ‘draws a clear distinction between goodwill and reputation’.

Judges:

Sundaresh Menon CJ

Citations:

[2014] 1 SLR 911, [2013] SGCA 65

Links:

Commonlii

Jurisdiction:

Commonwealth

Cited by:

Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

International, Intellectual Property

Updated: 12 April 2022; Ref: scu.566018

WH Allen and Co v Brown Watson Ltd: 1965

Whenever a demand has been created by advertising, and better still if there are actual sales, the law can recognise it as sufficient reputation spawning potential goodwill and grant an injunction, and add to it the ancillary remedy of account of profits.

Citations:

[1965] RPC 191

Jurisdiction:

England and Wales

Cited by:

Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 April 2022; Ref: scu.566019

Ager v Collingridge: 1886

Judges:

Kay J

Citations:

(1886) 2 Times LR 291

Cited by:

Applied – Anderson v Lieber Code Co 1917
The court askeed whether there was a copyright in telegraph codes. The code consisted of 100,000 5-letter words that had been arrived at by generating 450,000 words, from which those that were unpronounceable and those that were likely to lead to an . .
Cited – Navitaire Inc v Easyjet Airline Co and Another ChD 30-Jul-2004
The claimant alleged infringement of its copyright in a software system which dealt with airline reservations. It was not said that any code had been copied, but merely that an express requirement of the defendant ordering the system was that it . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 April 2022; Ref: scu.220334

Dawnay, Day and Co Limited; Dawnay, Day International Limited etc v Cantor Fitzgerald International etc: CA 24 Jun 1999

Where a party had leant its name to a joint venture on an implied licence that the name could be used whilst it remained a party to the joint venture, that licence expired when the company ceased to be a party to the joint venture. The court would not get involved in detailed examination of the ownership of a name within a group of companies in order to establish whether the goodwill in it resided with the holding company.

Citations:

Times 14-Jul-1999, [1999] EWCA Civ 1667, [2000] RPC 669

Jurisdiction:

England and Wales

Cited by:

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 . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 12 April 2022; Ref: scu.146582

Zino Davidoff SA v A and G Imports Ltd: ChD 24 May 1999

Though a company could prevent parallel import within the EU, it could not prevent goods sold outside the EU but without restriction on re-sale, being subsequently re-sold into the EU. The removal of a numbering mark did not materially reduce its quality.

Citations:

Times 24-May-1999, [1999] RPC 631

Statutes:

Trade Mark Council Directive 89/104/EEC

Jurisdiction:

England and Wales

Cited by:

Cited – Levi Strauss and Co and Another v Tesco Stores Ltd and others ChD 31-Jul-2002
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 . .
Referral – 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 – 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: 10 April 2022; Ref: scu.90689

The Topps Company Inc v Tom Hannah (Agencies) ltd: OHCS 14 Feb 2000

When asking whether one kind of sweet, contained in a distinctive toy-like packaging constituted a passing off in respect of another, the court should recognise that though an adult might make many fine distinctions between the two, the view that mattered was that of a child who might buy the sweets. It was correct here for the judge to attempt to look at the packaging through the eyes of a child.

Citations:

Times 14-Feb-2000

Intellectual Property

Updated: 10 April 2022; Ref: scu.89847

Regina v Bow Street Metropolitan Stipendiary Magistrate Ex Parte Screen Multimedia Ltd and Another: QBD 28 Jan 1998

An award of very substantial costs against a defendant infringing copyright was justified even though they were disproportionate to the small profits made.

Citations:

Times 28-Jan-1998

Statutes:

Copyright Designs and Patents Act 1988 107

Intellectual Property

Updated: 09 April 2022; Ref: scu.86172

Regie Nationale Des Usines Renault Sa v Maxicar Spa and Another (Case C-38-98): ECJ 23 May 2000

A French court found a company guilty of forgery by making parts for cars in breach of French laws governing registered designs. Such rights were not reflected in Italian law, and the applicants argued that an Italian court should not enforce such an order, as a breach of the right of free movement of goods. To refuse to recognise a decree of a court of another member state, the court must establish that the law was a misapplication of European law and against public policy. That could not be shown here.

Citations:

Times 23-May-2000

European, Intellectual Property

Updated: 09 April 2022; Ref: scu.85946

Kimberley-Clark Worldwide Inc v Procter and Gamble Ltd and Another: ChD 6 Sep 2000

A patent claim should not be considered covetous without evidence that the claim was in some way blameworthy. Courts must be careful when judging claims with hindsight, and where different national standards had been involved. A claim to amend a patent drafted in the US for grant in the European Patent Office by a German firm of patent agents without reference to UK practice. Blameworthy in this sense meant drafting a claim including material which the attorney knew to be old.

Citations:

Times 06-Sep-2000, Gazette 28-Sep-2000

Intellectual Property

Updated: 09 April 2022; Ref: scu.82776

Jones v Tower Hamlets London Borough Council and Another: ChD 26 Oct 2000

The architect drew plans for buildings on a development completion of which was taken over by the council. The architect claimed breach of copyright in his plans. The expression of design ideas in an architectural drawing was capable of protection by copyright. An architect might see the plans drawn by another, absorb some of the ideas, and then re-express the ideas in his own way. He may not copy them. The line between them is a fine one. Was the new design a copy of the style or idea or of the expression of the style or idea. One is acceptable, the other is not. The degree of similarity, and method of preparation of the second article were important.

Citations:

Gazette 26-Oct-2000, Times 14-Nov-2000

Statutes:

Copyright Designs and Patents Act 1988

Intellectual Property, Construction

Updated: 09 April 2022; Ref: scu.82614

Joy v Federation Against Copyright Theft: QBD 15 Feb 1993

The PACE codes of practice apply to FACT investigators who were acting in the investigation of a copyright breach wher and others criminal offence was suspected. Although they were in effect private individuals and fulfilled not even a quasi-statutory duty, they still fulfilled a duty, and had to obey the codes of practice.

Citations:

Ind Summary 15-Feb-1993

Statutes:

Police and Criminal Evidence Act 1984 67(9)

Intellectual Property

Updated: 09 April 2022; Ref: scu.82633

Hellewell v Chief Constable of Derbyshire: QBD 13 Jan 1995

The police were asked by shopkeepers concerned about shoplifting, for photographs of thieves so that the staff would recognise them. The police provided photographs including one of the claimant taken in custody. The traders were told only to show them to staff.
Held: A duty of confidence could arise when the police photographed a suspect without his consent, but the photograph could be published if reasonably required for the prevention and detection of crime, the investigation of alleged offences, or the apprehension of suspects unlawfully at large. The police could rely on the public interest defence to any action for breach of confidence. The police in disclosing the photograph acted entirely in good faith for the prevention or detection of crime and had distributed it only to persons who had reasonable need to make use of it. However ‘the term ‘reasonable’ is fluid in its application and it is as impossible as it is undesirable to lay down anything like a lexicon of the circumstances that will amount to reasonable use.’ (Obiter:) ‘If someone with a telephoto lens were to take from a distance and with no authority a picture of another engaged in some private act, his subsequent disclosure of the photograph would, in my judgment, as surely amount to a breach of confidence as if he had found or stolen a letter or diary in which the act was recounted and proceeded to publish it. In such a case, the law would protect what might reasonably be called a right of privacy, although the name accorded to the cause of action would be breach of confidence. It is, of course, elementary that, in all such cases, a defence based on the public interest would be available.’

Judges:

Laws J

Citations:

Gazette 15-Feb-1995, Times 13-Jan-1995, [1995] 1WLR 804, [1995] 4 All ER 473

Citing:

Cited – Marcel v Commissioner of Police of the Metropolis CA 1992
A writ of subpoena ad duces tecum had been issued requiring the production by the police for use in civil proceedings of documents seized during a criminal fraud investigation. The victim of the fraud needed them to pursue his own civil case.
Cited – Attorney-General v Guardian Newspapers Ltd (No 2) (‘Spycatcher’) HL 13-Oct-1988
Loss of Confidentiality Protection – public domain
A retired secret service employee sought to publish his memoirs from Australia. The British government sought to restrain publication there, and the defendants sought to report those proceedings, which would involve publication of the allegations . .

Cited by:

Cited – Regina (on the Application of Ellis) v The Chief Constable of Essex Police Admn 12-Jun-2003
An officer proposed to print the face of a convicted burglar on posters to be displayed in the town. The court considered the proposal. The probation service objected that the result would be to make it more difficult for him to avoid criminality on . .
Cited – Regina v Chief Constable of North Wales Police and Others Ex Parte Thorpe and Another; Regina v Chief Constable for North Wales Police Area and others ex parte AB and CB CA 18-Mar-1998
Public Identification of Pedophiles by Police
AB and CB had been released from prison after serving sentences for sexual assaults on children. They were thought still to be dangerous. They moved about the country to escape identification, and came to be staying on a campsite. The police sought . .
Cited – Campbell v Mirror Group Newspapers Ltd (MGN) (No 1) HL 6-May-2004
The claimant appealed against the denial of her claim that the defendant had infringed her right to respect for her private life. She was a model who had proclaimed publicly that she did not take drugs, but the defendant had published a story . .
Cited – Douglas and others v Hello! Ltd and others (No 3) CA 18-May-2005
The principal claimants sold the rights to take photographs of their wedding to a co-claimant magazine (OK). Persons acting on behalf of the defendants took unauthorised photographs which the defendants published. The claimants had retained joint . .
Cited – Callaghan v Independent News and Media Ltd QBNI 7-Jan-2009
callaghan_inmQBNI2009
The claimant was convicted in 1987 of a callous sexual murder. He sought an order preventing the defendant newspaper publishing anything to allow his or his family’s identification and delay his release. The defendant acknowledged the need to avoid . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Police, Media, Human Rights

Updated: 08 April 2022; Ref: scu.81310

British Sugar Plc v James Roberston and Sons: ChD 17 Feb 1996

The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3).
Held: There was no trade mark infringement by the use of a common laudatory word. The trade mark registration was cancelled. Courts should look to whether they have similar uses, they will be made available to the same users, they will be similar in size and makeup and they will compete with each other.

Judges:

Jacob J

Citations:

Times 17-Feb-1996, [1996] RPC 281

Statutes:

Trade Marks Act 1994 10(1) 10(2) 10(3)

Cited by:

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 – Bell Atlantic Corporation, Bell IP Holdings Llc v Bell Atlantic Communications Plc, Bell Atlantic Limited PatC 21-Dec-1998
The claimant sought to restrain the defendants from using the name ‘Bell Atlantic’ so as to cause confusion and a passing of the defendant had registered Internet domain names and sought to register trade marks similar to those of the claimants. The . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Mentioned – Commissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 08 April 2022; Ref: scu.78634

Brain v Ingledew Brown Benson and Garrett and Another: ChD 18 Apr 1995

A threats of an infringement claim regarding acts of the addressee between the Patent application being filed and the grant of the patent are actionable under the threat action procedure.

Citations:

Ind Summary 18-Apr-1995

Statutes:

Patents Act 1977 70(1) 70(2)

Jurisdiction:

England and Wales

Cited by:

Appeal From – Brain v Ingledew Brown Benson and Garrett and Another CA 1996
The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether . .
See Also – Brain v Ingledew Brown Bennison and Garrett (A Firm) (No 3) ChD 1997
The meaning of an alleged threat is to be decided in accordance with the understanding of an ordinary recipient in the position of the applicant, reading the letter in the normal course of business. Laddie J said: ‘the meaning and impact of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 08 April 2022; Ref: scu.78553

Anheuser-Busch v Budejovicky Budvar: CA 1984

The parties disputed the use of the name Budweiser for the beers which each sold.
Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and neither had achieved the reputation improperly and neither was making a misrepresentation. The court recognised that some degree of confusion might result, but this was true in the case of marks used in pursuance of registration under section 12(2) of the 1938 Act.

Judges:

Whitford J, Oliver LJ

Citations:

[1984] FSR 413

Statutes:

Trade Marks Act 1938 12(2)

Jurisdiction:

England and Wales

Cited by:

Cited – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might . .
Cited – Harrods Limited v Harrods (Buenos Aires) Ltd and Harrods (South America) Ltd ChD 15-Jan-1997
. .
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 08 April 2022; Ref: scu.258731

Arrigoni v EUIPO: ECJ 22 Mar 2018

(Order) Appeal – Article 181 of the Rules of Procedure of the Court – European Union trade mark – Annulment proceedings – International registration designating the European Union of the figurative mark containing the word elements ‘Arrigoni Valtaleggio’ – Rejection of the application for a declaration of invalidity

Citations:

ECLI: EU: C: 2018: 219, [2018] EUECJ C-642/17P – CO

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 07 April 2022; Ref: scu.608598

Wheat v Alphabet Inc / Google Llc and Another: ChD 26 Mar 2018

The parties contested leave to serve the defendant out of the jurisdiction.

Judges:

Marsh CM

Citations:

[2018] EWHC 550 (Ch)

Links:

Bailii

Statutes:

Copyright, Designs and Patents Act 1988

Jurisdiction:

England and Wales

Litigation Practice, Intellectual Property

Updated: 07 April 2022; Ref: scu.608333

Scomadi Ltd and Another v RA Engineering Co Ltd and Others (Orders): IPEC 27 Oct 2017

Citations:

[2017] EWHC 2907 (IPEC)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Main Judgment – Scomadi Ltd and Another v RA Engineering Co Ltd and Others (Judgment) IPEC 27-Oct-2017
Claims and counterclaims covering breach of contract, trade mark infringement, passing off, Registered Community Design (‘RCD’) infringement, UK unregistered design right infringement, negligent misrepresentation, negligent misstatement, . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 06 April 2022; Ref: scu.606375

Kiosked v EUIPO – VRT (K) (Judgment): ECFI 13 Mar 2018

(Judgment) – EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark K – Earlier Benelux figurative mark K – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:133, [2018] EUECJ T-824/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 April 2022; Ref: scu.606012

Hotelbeds Spain v EUIPO Guidigo Europe (Guidego What To Do Next): ECFI 13 Mar 2018

EU Figurative EU Trade Mark – Judgment – EU trade mark – Opposition proceedings – Application for EU figurative mark Guidego what to do next – Earlier EU word mark GUIDIGO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:134, [2018] EUECJ T-346/17

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 April 2022; Ref: scu.606009

CinkciarzPl v EUIPO (Euro / Dollar symbols): ECFI 8 Mar 2018

(Intellectual, Industrial and Commercial Property – Judgment) Trademark of the European Union – Application for a figurative European Union mark’ – ‘Absolute grounds for refusal – Lack of distinctive character – Article 7 (1) (b) of Regulation (EC) No 207/2009 [ Article 7 (1) (b) of Regulation (EU) 2017/1001) – Descriptive character – Article 7 (1) (c) of Regulation No 207/2009 (now Article 7 (1) (c) ), of Regulation 2017/1001) – Obligation to state reasons – Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001)

Citations:

T-665/16, [2018] EUECJ T-665/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 05 April 2022; Ref: scu.605994

Doceram GmbH v CeramTec GmbH: ECJ 8 Mar 2018

(Intellectual and Industrial Property – Judgment) Reference for a preliminary ruling – Intellectual and industrial property – Regulation (EC) No 6/2002 – Community design – Article 8(1) – Features of appearance of a product solely dictated by its technical function – Criteria for assessment – Existence of alternative designs – Consideration of the point of view of an ‘objective observer’

Citations:

ECLI:EU:C:2018:172, [2018] EUECJ C-395/16, [2018] WLR(D) 151

Links:

Bailii, WLRD

Jurisdiction:

European

Intellectual Property

Updated: 05 April 2022; Ref: scu.606001

Jager and Polacek v OHIM: ECJ 5 Jul 2012

ECJ Opinion – Appeals – Community trade mark – Regulation (EC) No 40/94 – Regulation (EC) No 2868/95 – Procedure upon opposition to registration of a Community trade mark – Legal nature of the act adopted at the close of the stage of the examination of the admissibility of the opposition – Revocation procedure – Principle of effective judicial protection – Principle of legal certainty

Judges:

Bot AG

Citations:

[2012] EUECJ C-402/11 – P

Links:

Bailii

Jurisdiction:

England and Wales

Cited by:

Opinion – Jager and Polacek v OHIM ECJ 18-Oct-2012
Appeal – Community trade mark – Opposition – Regulation (EC) No 2868/95 – Rule 18(1) – Legal nature of a communication from OHIM informing a party that an opposition has been found to be admissible – Right to an effective legal remedy . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 05 April 2022; Ref: scu.605772

Kondyterska Korporatsiia ‘Roshen’ v EUIPO – Krasnyiy Oktyabr (Representation D’Une Ecrevisse): ECFI 7 Feb 2018

Intellectual, Industrial and Commercial Property – Judgment – EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark representing a crayfish – Earlier international registration of the figurative mark ????VIE SHEIKI – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

Citations:

ECLI:EU:T:2018:74, [2018] EUECJ T-775/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 April 2022; Ref: scu.604724

Sony Interactive Entertainment Europe v EUIPO – Marpefa (Vieta): ECFI 8 Feb 2018

Intellectual, Industrial and Commercial Property – Judgment – EU trade mark – Revocation proceedings – EU figurative mark Vieta – Genuine use of the trade mark – Decision taken following the annulment by the General Court of an earlier decision – Article 65(6) of Regulation (EC) No 207/2009 (now Article 72(6) of Regulation (EU) 2017/1001) – Res judicata

Citations:

ECLI:EU:T:2018:77, [2018] EUECJ T-879/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 April 2022; Ref: scu.604740

Solen Cikolata Gida Sanayi Ve Ticaret v EUIPO – Zaharieva (Boite Presentoir A Cornets): ECFI 7 Feb 2018

Intellectual, Industrial and Commercial Property – Judgment – Community design – Invalidity proceedings – Registered Community design representing a display box for cornets – Earlier international registration designating Bulgaria – Ground for invalidity – Use in the subsequent design of a distinctive sign the holder of which has the right to prohibit such use – Article 25(1)(e) of Regulation (EC) No 6/2002 – Obligation to state reasons – Article 62 of Regulation No 6/2002 – Duty of diligence – Article 63(1) of Regulation No 6/2002

Citations:

ECLI:EU:T:2018:72, [2018] EUECJ T-793/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 April 2022; Ref: scu.604738

Philip Morris Brands v EUIPO – Explosal (Superior Quality Cigarettes Filter Cigarettes Raquel): ECFI 1 Feb 2018

EU Trade Mark – Invalidity Proceedings : Judgment – EU figurative mark Superior Quality Cigarettes FILTER CIGARETTES Raquel – Earlier international figurative mark Marlboro – Relative ground for refusal – Reputation – Production of evidence for the first time before the Board of Appeal – Discretion of the Board of Appeal – Article 76(2) of Regulation (EC) No 207/2009 (now Article 95(2) of Regulation (EU) 2017/1001) – Rule 50(1) of Regulation (EC) No 2868/95

Citations:

T-105/16, [2018] EUECJ T-105/16

Links:

Bailii

Jurisdiction:

European

Intellectual Property

Updated: 04 April 2022; Ref: scu.604733

Corbiere Ltd v Ke Xu: ChD 26 Jan 2018

The Claimants sought (1) an order that Mr Xu disclose, among other things, the location of confidential information he wrongly accessed and copied, what became of it, and the names of those who have or have had it in their possession; and (2) an order that Mr Xu be restrained from leaving the jurisdiction and that he surrender his passport until he has complied with those orders.

Judges:

Zacaroli J

Citations:

[2018] EWHC 112 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 04 April 2022; Ref: scu.604190

Appleby Global Group Llc v British Broadcasting Corporation and Another: ChD 26 Jan 2018

Claim by international firm of lawyers for breach of confidence against publishers who had received and published that information. The court now considered which division of the High Court should hear the claim.
Held: Rose J considered the creation of the M and CL and observed: ‘the starting point is, as I have said, that the claimant can generally speaking choose in which Division to start the claim. Inroads have been made into a claimant’s ability to choose by the allocation of particular subjects to particular Divisions, by the creation of specialist lists about the grant of a specific power to the judges of a specialist list to control the cases that are heard in it. The CPR restricts the definition of a specialist list to a list created by a rule or Practice Direction because that ensures that before a specialist list is created, the lengthy oversight procedures and broad consultations that precede the making of a new rule or the issue of a new Practice Direction will have been followed. The M and CL is in its early stages and is proceeding by incremental steps. As Warby J stated in the ‘Conclusions and next steps’ section of the report on the consultation, it was too early in the process to formulate any firm proposals for submission to the Civil Procedure Rules Committee. That committee would need to consider whether and, if so, how any changes to the CPR or any new Practice Direction should be taken forward. In my judgement, the creation of the M and CL in its current form does not mean that media cases wherever commenced should now be transferred into that list, against the wishes of the claimant.’

Judges:

Rose J

Citations:

[2018] EWHC 104 (Ch)

Links:

Bailii

Jurisdiction:

England and Wales

Citing:

Cited – NATL Amusements (UK) Ltd and Others v White City (Shepherds Bush) Ltd Partnership and Another TCC 16-Oct-2009
Application for transfer of claim from QBD to TCC. Akenhead J considered an application to transfer a claim from the Chancery Division to the Technology and Construction Court. After reviewing the authorities, he said: ‘It is probably unnecessary to . .

Cited by:

Cited – Mezvinsky and Another v Associated Newspapers Ltd ChD 25-May-2018
Choice of Division and Business Lists
Claim that the publication of pictures of the young children of the celebrity claimants had been published by the defendant on-line without consent and without pixelation, in breach of their human rights, of data protection, and right to privacy. . .
Cited – Mezvinsky and Another v Associated Newspapers Ltd ChD 25-May-2018
Choice of Division and Business Lists
Claim that the publication of pictures of the young children of the celebrity claimants had been published by the defendant on-line without consent and without pixelation, in breach of their human rights, of data protection, and right to privacy. . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Litigation Practice

Updated: 04 April 2022; Ref: scu.604188