ECJ Appeal Community trade mark – Figurative mark ‘Bainbridge’ Opposition by the proprietor of national word, figurative and three-dimensional marks including the word ‘Bridge’ Rejection of the opposition Concepts of ‘defensive trade mark registrations’ and ‘families’ or ‘series’ of trade marks.
C-234/06, [2007] EUECJ C-234/06, ECLI:EU:C:2007:514, [2007] ECR I-7333
European
Updated: 10 July 2022; Ref: scu.251129
Evans Lombe J
[2007] EWHC 451 (Ch)
England and Wales
Cited – Phones 4U Ltd v EE Ltd ComC 16-Jan-2018
The parties contracted for the marketing of contracts for the marketing of the defendant’s mobile phone contracts. On the claimant entering administration, the defendant exercised a clause in their contract to terminate the contract. The claimant . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 July 2022; Ref: scu.250021
Appeal on refusal of objection to grant of trade mark registration.
Mann J
[2007] EWHC 462 (Ch)
England and Wales
Updated: 10 July 2022; Ref: scu.250024
The applicants appealed rejection of their applications for patents. The comptroller-general had said that patents were in respect of computer programs excluded from registration.
Held: The appeals failed. There was no relevant technical effect in merely moving vehicles and their cargos around according to a routing algorithm.
Pumfrey J
[2007] EWHC 476 (Pat)
England and Wales
Cited – Vicom/Computer-related invention EPOBA 1987
The claimant sought a patent claiming a method for the digital processing of images and an associated apparatus (which might be a computer) for implementing the method.
Held: The claims were not to a computer program as such: ‘Generally . .
Cited – Merrill Lynch’s Application CA 1989
The invention in this case was an improved ‘data processing system for making a trading market in at least one security in which the system proprietor is acting as principal.’
Held: More than one exclusion can be in play in relation to the . .
Cited – In Re Patent Application No 9204959 by Fujitsu Ltd CA 14-Mar-1997
A computer program modelling a crystal structure is not patentable; it was not a hardware function, and software is not capable of protection under Patents law. Aldous LJ repeated his concern at the so called ‘technical contribution test’ for . .
Appeal from – CFPH LLC, Patent Applications By PatC 21-Jul-2005
In the context of deciding as to the patentability the use of the description ‘technical’ was ‘a useful servant but a dangerous master’. Peter Prescott QC discussed the importance of being clear as to the meaning of an ‘invention’ saying: ‘does it . .
Cited – Shopalotto.Com Ltd, Re Patent Application Gb 0017772.5 PatC 7-Nov-2005
. .
Reasoning disapproved – Pension Benefits EPOBA 2000
The applicant sought a European patent for a method of calculating and controlling pensions benefits. The claim was ‘1. A method of controlling a pension benefits program by administering at least one subscriber employer account on behalf of each . .
Cited – Research In Motion UK Ltd v Inpro Licensing Sarl PatC 2-Feb-2006
The court should incline towards patentability in the case of computer programs: ‘I am anxious that these exclusions are not given too wide a scope. All modern industry depends upon programmed computers, and one must be astute not to defeat patents . .
Cited – Kapur v Comptroller General of Patents, Designs and Trade Marks PatC 10-Apr-2008
The applicant sought patents for systems of document management. The applications had been rejected as being for computer programs as such.
Held: The exclusion from protection created by the section was to be construed narrowly. In the absence . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 July 2022; Ref: scu.249971
[2006] EWHC 2333 (Pat)
England and Wales
Updated: 10 July 2022; Ref: scu.249394
The claimant sought damages for an alleged abuse of dominant market position by the defendants in its patent licensing. The defendant denied that the court had jurisdiction.
Held: An English court would have jurisdiction in such a case ony if the originating acts occurred here, of the damages substantially happened here.
Pumfrey J
[2007] EWHC 332 (Ch), Times 27-Feb-2007
England and Wales
Updated: 09 July 2022; Ref: scu.249239
Kitchin J
[2007] EWHC 111 (Ch)
England and Wales
Updated: 09 July 2022; Ref: scu.248387
Both parties used the name ‘Elle’ in their respective products, a women’s magazine, and handknitting yarns. They disputed the registration of a trade mark for the latter in the UK.
Held: The court endorsed the continuing applicabiity of the guidelines in Reef when a court was asked to upset a decision of a lower but specialist tribunal.
Sir Andrew Morritt C
[2007] EWHC 63 (Ch)
Trade Marks (Proof of Use etc) Regulations 2004, Trade Marks Act 1994 5(2) 5(3)
England and Wales
Endorsed – Bessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Lists of cited by and citing cases may be incomplete.
Updated: 09 July 2022; Ref: scu.248252
ECJ Community trade mark Opposition proceedings Application for figurative mark CALVO Earlier Community word mark CALAVO Admissibility of the opposition Grounds of the opposition lodged in a language other than the language of the proceedings Article 74(1) of Regulation (EC) No 40/94 Rule 20(3) of Regulation (EC) No 2868/95.
T-53/05, [2007] EUECJ T-53/05
European
Updated: 09 July 2022; Ref: scu.247901
The singer had recorded a song, ‘Forever After’. She sought damages in copyright saying that a later recording by the defendants titled ‘Nothing Really Matters’ was infringing, having copied elements of the voice expression of her own performance, particularly the timbre, pitch contour and the syncopation. The defendants asked the court to strike out the claim, asserting that what was alleged to have been copied was not itself protected by copyright, that it was not a musical work, but just certain selected features of the work. They went on to say that if copyright was to be claimed for some part of a work, it had to form a substantial part, and it was not open to the claimant to herself select which features went to make up the work for which she claimed protection. The claimant answered saying that there might well be circumstances where a constituent part of a larger work may be entitled to a copyright.
Held: The strike out request succeeded. Copyright existed in a work in its entirety, not in parts of or extracts from the work. A copying of part of a work might infringe the copyright in the entire work, if it formed a substantial part. An assessment have to be made in each particular case according the facts. The court declined to follow a path which would lead to recognition of layers making up different artistic copyrights, and open up all sorts of new problems. To find a separate copyright the court should look to see whether the element for which a separate copyright was asserted could in some way stand alone.
Blackburne J
[2005] ECDR (21) 312, HC 03CO4523, [2005] EWHC 449 (Ch)
England and Wales
Cited – IPC Media Ltd v Highbury-Leisure Publishing Ltd ChD 21-Dec-2004
The claimant magazine publisher alleged breach of copyright by the defendant in their magazine, as to the cover page designs used. It was not clear just which cover was said to have been copied.
Held: The first step in a copyright action is . .
Cited – Newspaper Licensing Agency Ltd v Marks and Spencer Plc HL 12-Jul-2001
The respondent company subscribed to a cuttings service, but redistributed the cuttings within its offices. The cuttings agency claimed that the re-distribution infringed their rights in the typographical arrangement. The cuttings did not give any . .
Cited – Coogi Australia Pty Ltd v Hysport International Pty Ltd 1998
(Federal Court of Australia) What makes up the copyright work is in any given case is not governed by what the claimant alleging copyright infringement chooses to say that it is. It is rather a matter for objective determination by the court.
. .
Lists of cited by and citing cases may be incomplete.
Updated: 08 July 2022; Ref: scu.246800
Patents – action for infringement of two patents relating to the formulation of cyclosporin, which is a pharmaceutical of particular utility in producing immunosuppression in recipients of allogenic organ transplants.
Pumfrey J
[2006] EWHC 2506 (Pat)
Appeal from – Novartis (Ag) v Ivax Pharmaceuticals UK Ltd CA 18-Oct-2007
Novartis appeals the decision of Pumfrey J, [2006] EWHC 2506 (Pat) that Ivax’s ‘Equoral’ product does not infringe its UK patent No. 2,222,770 (the ‘Patent’). The Judge held the patent valid. . .
Lists of cited by and citing cases may be incomplete.
Updated: 08 July 2022; Ref: scu.245380
Mr Justice Lewison
[2006] EWHC 1638 (Pat)
England and Wales
Updated: 07 July 2022; Ref: scu.244015
The claimant sought judicial review of the authority’s distribution to the media of a CCTV film of his attempted suicide.
Held: A Local Authority which was empowered to make video recording of street events had a power to distribute resulting film being unaware of objection.
Harrison J
Times 18-Dec-1997, [1997] EWHC Admin 1041
Criminal Justice and Public Order Act 1994 111
England and Wales
Updated: 07 July 2022; Ref: scu.86197
The complainant appealed dismissal of charges against the respondent of displaying for sale goods bearing marks identical to registered trade marks. The defendant asserted that he had reasonable grounds for belief that the goods were not counterfeit having cecked with market officials and a VAT inspector. The magistrates had acted on the basis that the test was objective not subjective,
Held: The prosecutor’s appeal was allowed. McCombe J: ‘a market trader, like Mr Kahraman here, who purchases goods with well-known designer names on them at very low prices, from a person of unknown identity (even if not positively ‘disreputable’) and with no positive evidence of trade reputation cannot begin to discharge the burden of proof imposed upon him by Section 92(5). It cannot conceivably be sufficient to observe other traders in similar circumstances buying goods or that the defendant is inexperienced in his trade or new to the market. The defence of reasonableness applies in equal manner to the experienced and the inexperienced. ‘
Latham LJ, McCombe J, Dobbs J
[2006] EWHC 1703 (Admin)
England and Wales
Cited – Regina v McCrudden CACD 2005
Laws LJ: ‘Section 92(5) affords a positive and specific defence as to the use of the trade mark by the defendant. It does not provide a general defence of good faith … It seems to us that the provisions contained in section 92 have been devised to . .
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 – Regina v Rhodes CACD 2002
Andrew Smith J: ‘No doubt in many cases the fact that a trader could ascertain whether a trade mark was registered by searching the register will make it extremely difficult to establish a belief involving ignorance of a registered mark is held on . .
Lists of cited by and citing cases may be incomplete.
Updated: 07 July 2022; Ref: scu.243313
[2013] UKIntelP o28713
England and Wales
Updated: 06 July 2022; Ref: scu.517152
ECJ Action for damages – Non-contractual liability of the Community – Community project for a global satellite radionavigation system (Galileo) – Damage claimed by the owners of trade marks and trade names containing the term – Galileo- – Community liability In the absence of unlawful conduct of its organs – Abnormal and special damage
T-279/03, [2006] EUECJ T-279/03, [2006] EUECJ T-279/03
European
Updated: 06 July 2022; Ref: scu.241702
[2006] EWHC 802 (Pat)
England and Wales
Updated: 05 July 2022; Ref: scu.240444
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 registered in a Member State – Trade mark consisting of a term borrowed from the language of another Member State in which it is devoid of distinctive character and/or descriptive of the goods in respect of which the trade mark was registered
P. Jann, P
[2006] CEC 621, [2006] ETMR 48, ECLI:EU:C:2006:164, C-421/04, [2005] EUECJ C-421/04
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.
Updated: 05 July 2022; Ref: scu.239171
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of time.
Held: The appeal succeeded: ‘ the long-standing rule of practice is that the new claim should be advanced in a new action, where the defence can be tested. If (as the Hearing Officer rightly concluded) CPR 17.4 did not apply, then the long standing rule of practice was the relevant default rule. ‘ ‘Section 72 (2) bars the making of an application outside the two year limit, not merely the making of an order. In addition, section 74 (4) precludes the raising (outside the two year time limit) of invalidity on the ground that the patent was granted to a person not entitled to it in infringement proceedings (among others). ‘ and ‘section 37 (5) bars the making of a claim outside the two year time limit; not merely the grant of a particular remedy. ‘ The tribunal had its own inherent power to manage its afairs, but the rules gave the Comptroller his own discretion and limited its use. In that circumstance, the inherent power was not to be relied upon to restore a discretion withheld by parliament. There was a fundamental difference between carrying on existing proceedings as a result of a devolution of title once the proceedings have started and an enlargement of the scope of a dispute as a result of an amendment. If an amendment adding a new party or a new cause of action is made to a rule 54 statement, the amendment will not relate back to the date of the original reference, but (where the amendment is made in order to raise a claim of the kind contemplated by Article 23 of the CPC) will take effect from the time it was made. The underlying principles are: i) That permission to amend to introduce new parties or a new claim should not be granted where there is a clear limitation defence; and ii) Where the limitation defence is arguable, it should be tested in fresh proceedings.
Lewison J
[2006] RPC 24, [2006] EWHC 160 (Ch)
Patents Act 1977 37(5), Patents Rules 1995, Civil Procedure Rules 17
England and Wales
Cited – Ocean Estates Ltd v Pinder HL 1969
The court asked whether the sufficiency of adverse possession might be qualified either by the intentions of the paper owner or the squatter’s willingness to pay for their occupation if asked. Lord Diplock: ‘Where questions of title to land arise in . .
Cited – Boake Allen Ltd and others v HM Revenue and Customs CA 31-Jan-2006
The claimant companies had paid corporation tax under rules which had later been found to be discriminatory. They now sought repayment by virtue of double taxation agreements with the countries in which the parent companies were based.
Held: . .
Cited – Langley v North West Water Authority 1991
A tribunal has an inherent power (subject to constraints) to regulate the procedure to be followed before it. . .
Cited – Pharmedica GMBH’s Trade Mark Application ChD 2000
The tribunal was asked whether an assignee of a trademark should be substituted in existing opposition proceedings for the assignor. The assignment had taken place after the proceedings had begun.
Held: A tribunal has an inherent power to . .
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 – Regina v Comptroller-General of Patents Designs and Trademarks ex parte Ash and Lacey Building Products Ltd 2002
Revocation was sought on the ground that the patent was invalid because of anticipation by prior publication. The court considered its powers under section 77 in the context of such a revocation application: ‘ . . the power to revoke arises in . .
Cited – Parsons and Another v George and Another CA 13-Jul-2004
The claimant sought to begin proceedings to renew his business tenancy, but the proceedings were issued in the wrong name. He sought to amend the proceedings to substitute the correct defendant, but that application was out of time.
Held: . .
Cited – Loveridge and Loveridge v Healey CA 20-Feb-2004
The landowner sought to recover possession of land occupied under an agreement by a mobile home owner.
Held: It was necessary for the land owner to show that he had complied with the requirements under the Act. It was insufficient for the . .
Cited – Goode v Martin CA 13-Dec-2001
The claimant had sought to amend her claim for damages for personal injuries. The application had been rejected as introducing a claim not based on the same facts. She had suffered severe head injuries, and had no memory of the accident. She served . .
Cited – Cobbold v London Borough of Greenwich CA 9-Aug-1999
The tenant had sought an order against the council landlord for failure to repair her dwelling. The defendant appealed refusal of leave to amend the pleadings in anticipation of the trial, now due to start on the following day.
Held: Leave was . .
Cited – Welsh Development Agency v Redpath Dorman Long Ltd CA 4-Apr-1994
A new claim was not deemed to have been made until the pleading was actually amended for limitation purposes, and should not be allowed after the limitation period had expired. The date of the application for leave to amend was not at issue. The . .
Cited – Aldi Stores Ltd v Holmes Buildings Plc CA 1-Dec-2003
What makes a claim a ‘new claim’ as defined in section 35(2) of the Limitation Act 1980 is not the newness of the case according to the type or quantum of the remedy claimed, but the newness of the cause of action that it involves. A cause of action . .
Cited – Lloyds Bank Plc v Rogers CA 16-Jul-1999
Where a claim had been made for possession of property under a legal charge, but no claim had been made for financial relief, and a later claim for such relief was made through an amended claim, the loss of the possible defence of limitation was a . .
Cited – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Appeal from – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
At First Instance – Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Lists of cited by and citing cases may be incomplete.
Updated: 05 July 2022; Ref: scu.238685
Lewison J
[2006] EWHC 225 (Ch)
England and Wales
Updated: 05 July 2022; Ref: scu.238684
Appeal against refusal to deny registration of trade mark.
Peter Smith J
[2006] EWHC 33 (Ch)
England and Wales
Updated: 04 July 2022; Ref: scu.237912
ECJ Appeal – Community trade mark – Article 8(1)(b) of Regulation (EC) No 40/94 -? Likelihood of confusion – Word mark PICARO – Opposition by the proprietor of the Community word mark PICASSO.
Adopting Sabel’s requirement that there should be a global appreciation of the visual, aural or conceptual similarities of the marks in question, the court emphasised that, in the course of such a global appreciation, conceptual differences observed between the signs might counteract the visual and phonetic similarities between them.
C-361/04, [2006] EUECJ C-361/04
European
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.237649
ECJ Community trade mark – Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – Article 8(1)(b), Article 15(2) and Article 43(3) of Regulation (EC) No 40/94.
C-173/04, [2006] EUECJ C-173/04
European
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
See Also – Devinlec v OHMI-Time Art (Quantum) ECFI 12-Jan-2006
ECJ Community trade mark – Figurative mark containing the verbal element -‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.237642
ECJ Community trade mark – Figurative mark containing the verbal element -‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – Article 8(1)(b), Article 15(2) and Article 43(3) of Regulation (EC) No 40/94.
T-147/03, [2006] EUECJ T-147/03
European
See Also – Devinlec Developpement Innovation Leclerc SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) ECJ 12-Jan-2006
ECJ Community trade mark – Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.237643
ECJ Community trade mark – Opposition proceedings – Application for a figurative Community trade mark containing the word element ‘CRISTAL CASTELLBLANCH’ – Earlier national word mark CRISTAL – Genuine use of the earlier mark – Likelihood of confusion – Article 8(1)(b), Article 15(2)(a) and Article 43(2) and (3) of Regulation (EC) No 40/94.
T-29/04, [2005] EUECJ T-29/04
European
Updated: 04 July 2022; Ref: scu.235934
The defendants sought an interim ruling that they were not the cause of the claimant’s losses. They had acted as patent agents to license to exploit the claimant’s patent in the UK. They alleged that the failure to complete the registration of the patent in a timely fashion meant that they had been unable to recover losses despite the licence.
Peter Smith J
[2005] EWHC 2481 (Ch)
England and Wales
Cited – Cook v Swinfen 1966
. .
Cited – Vision Golf v Weightmans (a Firm) ChD 26-Jul-2005
The defendant solicitors were joint tortfeasors, having failed to make an application to court in a timely fashion, when it might have succeeded. It defended the claim saying that had the claimant issued proceedings against a second firm that firm . .
Cited – Governors of the Hospital of Sick Children v McLaughlin and Harvey plc 1987
. .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.234713
Jacob J
[1999] EWHC 260 (Ch)
England and Wales
Updated: 04 July 2022; Ref: scu.231580
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 proprietor – Offering for sale or selling goods placed under the external transit procedure or the customs warehousing procedure – Opposition of the trade mark proprietor – Onus of proof.
Class International shipped into Rotterdam a container load of toothpaste bearing the Aquafresh trade mark from a source in South Africa. The court was asked whether Article 5(1) of the Trade Marks Directive and Article 9(1) and (2)(c) of the Community Trade Mark Regulation must be interpreted as meaning that the trade mark proprietor is entitled to oppose the introduction into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not previously put on the market in the Community by that proprietor or with his consent.
Held: Non-Community goods placed under the external transit procedure or the customs warehouse procedure were not to be regarded as ‘imported’ for the purposes of the Trade Marks Directive or the Community Trade Mark Regulation. Use in the course of trade required introduction of the goods into the Community for the purposes of putting them on the market
[2006] Ch 154, C-405/03, [2005] EUECJ C-405/03
European
Cited – Eli Lilly and Company and Another v 8PM Chemist Ltd CA 5-Feb-2008
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 . .
Cited – Nokia Corporation v Revenue and Customs ChD 27-Jul-2009
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 . .
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.
Updated: 04 July 2022; Ref: scu.231244
It was argued that the Secretary of State, when implementing the Directive in the 2001 Regulations, had exceeded his powers in preserving provisions of the Registered Designs Act. The judge had held the Seceretary had exceeded his powers. The Attorney general now criticised the judge for failing to allow for the extent of Parliamentary scrutiny afforded to secondary legislation.
Held: ‘It is the people of the United Kingdom, the electorate, who are entitled to the assurance that laws are normally made by primary legislation and will only exceptionally be amended by secondary legislation. ‘ However, s2(2) of the 1972 Act was sui generis: ‘Unlike other provisions allowing for the amendment of primary legislation by secondary legislation, it flows directly from the Treaty obligations of the United Kingdom. ‘ The obligations identified and incorporated were obligations even though secondary, and were validly incoporated.
Waller LJ said that the primary objective of any secondary legislation under section 2(2) must be to bring into force laws which, under the Treaties, the United Kingdom has agreed to make part of its laws.
Waller, May, Jacob LJJ
Times 07-Nov-2005, [2005] EWCA Civ 1191, [2006] Ch 337
EC Directive 98/71/EC, Registered Designs Regulations 2001, European Communities Act 1972 2
England and Wales
Appeal from – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .
Cited – McKiernon v Secretary of State for Social Security CA 26-Oct-1989
A statute granting a power to be amended by a subordinate instrument can only do so by an express power: ‘Whether subject to the negative or affirmative resolution procedure, [subordinate legislation] is subject to much briefer, if any, examination . .
Cited – Regina v Secretary of State for Trade and Industry ex parte Unison 1996
The 1978 Directive required consultation in the case of collective redundancies. Acts had incorrectly incorporated this requirement into English law. The error was corrected in the 1995 Regulations.
Held: Anything is ‘related to’ a Community . .
Cited – Regina v Ministry of Agriculture Fisheries and Food Ex Parte Hedley Lomas (Ireland) Ltd ECJ 23-May-1996
The wrongful prevention by a state of the lawful export of animals gave rise to a right to claim for damages.
LMA The UK had refused to grant licences for the export of live sheep to Spain, on the grounds . .
Cited – Addison v Denholm Ship Management (UK) Ltd EAT 1997
An issue before the EAT was whether regulations made under section 2(2) of the 1972 Act applied to the crew of a floating hotel/ship in the North Sea.
Held: According to European law the UK could choose whether or not to apply employment . .
Cited – Ebony Maritime SA and Loten Navigation Co Ltd v Prefetto della Provincia di Brindisi and others ECJ 27-Feb-1997
Europa 1 Common commercial policy – Trade with non-member countries – Embargo measures against the Federal Republic of Yugoslavia (Serbia and Montenegro) – Regulation No 990/93 – Measures to detain and confiscate . .
See Also – Oakley Inc v Animal Ltd. and others PatC 16-Mar-2005
. .
Cited – Perth and Kinross Council v Donaldson and Others 2004
The court considered whether the TUPE regulations in going beyond what was required under the European Directive was invalid.
Held: ‘If it is to be suggested that the 1981 Regulations have effectively allowed the Directive to operate in that . .
Cited – des Gaz SA v Falks Veritas Ltd CA 1974
The court considered for the first time, the effect of the Rome Treaty. It ‘came about because of a tin can’ .
A question requiring the exercise of a judges discretion is to be determined as at the date that the primary judge gave judgment, . .
Cited – Slack and Others v Cumbria County Council and Another CA 3-Apr-2009
The court was asked when the six month’s limit for beginning equal pay proceedings began. The new section 2ZA set the qualifying date as ‘the date falling six months after the last day on which the woman was employed in the employment.’ The problem . .
Cited – The United States of America v Nolan SC 21-Oct-2015
Mrs Nolan had been employed at a US airbase. When it closed, and she was made redundant, she complained that the appellant had not consulted properly on the redundancies. The US denied that it had responsibility to consult, and now appealed.
Cited – Brent London Borough Council and Others v Risk Management Partners Ltd SC 9-Feb-2011
The council had put out to tender its insurance requirements. The respondent submitted its bid. The council then withdrew the tender in order to take up membership of a mutual company providing such services created by local authorities in London. . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.231233
Claim in performance rights – challenge to order for security for costs on appeal – evidence available at date of first hearing.
[2005] EWCA Civ 1091
England and Wales
At First Instance – Experience Hendrix Llc v Purple Haze Records Ltd and Another ChD 24-Feb-2005
The claimant company sought summary judgment against the defendants who had manufactured and sold unauthorised recordings of a concert by the late Mr Hendrix in Sweden in 1969.
Held: The performance was given retrospective protection under the . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 July 2022; Ref: scu.230030
The defendants sold diamond grit allegedly for the sole purpose of making grinding tools in which it was to be embedded in a resin bond as part of a grinding material patented by the plaintiffs.
Held: The defendants could not be infringers unless they ‘sold the grits in circumstances which in some way made them participants in their subsequent embodiment in resin bonded grinding wheels, or that they induced someone so to embody them.’
Lord Justice Buckley said: ‘The plaintiffs do not only assert infringement by the defendants. They also say that the defendants have procured, counselled and/or aided other persons to infringe. This may perhaps amount to an allegation of direct infringement by the defendants themselves, but I am inclined to think that it is a claim in respect of a distinct, suggested tort of procuring infringement by others (based upon the principle enunciated by Erle J in Lumley v Gye’ and
‘facilitating the doing of an act is obviously different from procuring the doing of an act.’
Lord Justice Buckley
[1979] FSR 59
England and Wales
Cited – Lumley v Gye 1853
Inducing breach of contract is a Tort
An opera singer (Miss Wagner) and the defendant theatre owner were joint wrongdoers. They had a common design that the opera singer should break her contract with the plaintiff theatre owner, refuse to sing in the plaintiff’s theatre and instead . .
Cited – MCA Records Inc and Another v Charly Records Ltd and others (No 5) CA 5-Oct-2001
The court discussed the personal liability of a director for torts committed by his company: ‘i) a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the . .
Cited – CBS Songs Ltd v Amstrad Consumer Electronics Plc HL 12-May-1988
The plaintiffs as representatives sought to restrain Amstrad selling equipment with two cassette decks without taking precautions which would reasonably ensure that their copyrights would not be infringed by its users.
Held: Amstrad could only . .
Cited – Fish and Fish Ltd v Sea Shepherd Uk and Others CA 16-May-2013
The claimant company sought damages after their transport of live tuna was attacked by a protest group. They now appealed against a decision that the company owning the attacking ship was not liable as a joint tortfeasor.
Held: The appeal was . .
Cited – Sea Shepherd UK v Fish and Fish Ltd SC 4-Mar-2015
Accessory Liability in Tort
The court considered the concept of accessory liability in tort. Activists had caused damage to vessels of the respondent which was transporting live tuna in cages, and had caused considerable damage. The appellant company owned the ship from which . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 July 2022; Ref: scu.230359
Copyright was claimed in a draft legal agreement. Infringement was established, but the court was asked to look at the assessment of damages.
Held: ‘what is the basis upon which damages for breach of copyright are awarded? The question cannot be answered without consideration of the nature of the wrongdoing which breach of copyright represents. The nature of the wrong is clear enough. In a case where the copyright work is a written document, it consists in the unauthorised use of the actual text of the document. It does not consist in pirating the idea or ideas to be found in the text.’ The claimed loss was not attributable to any breach of copyright: not because it was unforeseeable or otherwise too remote . . . but because in principle . . . it lies beyond the scope of protection which the law of copyright affords.’ The judge had lost hold of the distinction between the loss which flowed from the copying of the text and that which flowed from the copying of the ideas. The appeal succeeded.
[2005] EWCA Civ 931
England and Wales
Cited – Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd CA 1936
. .
Cited – Paterson Zochonis and Co v Merfarken Packaging Ltd CA 1986
The normal measure of damages for copyright infringement is the amount by which the copyright is depreciated, by the infringement, as a chose in action. . .
Cited – Work Model Enterprises Limited v ECO System Limited 1996
There had been an admitted infringement of copyright by a competitor who copied the claimant’s brochure.
Held: The infringement did not cause the lost sales which were the result of legitimate competition. . .
Cited – Gerber Garment Technology Inc v Lectra Systems Ltd ChD 30-Jan-1995
A prior art recital in a Patent application is strong but rebuttable evidence of the state of knowledge. . .
Cited – Jolley v Sutton London Borough Council HL 24-May-2000
An abandoned boat had been left on its land and not removed by the council. Children tried to repair it, jacked it up, and a child was injured when it fell. It was argued for the boy, who now appealed dismissal of his claim by the Court of Appeal, . .
Cited – Gerber Garment Technology Inc v Lectra Systems Limited Lectra Systemes SA CA 18-Dec-1996
The plaintiffs claimed damages for patent infringement. Some of the lost profits for which the plaintiff company claimed damages were suffered by subsidiary companies in which it held all the shares.
Held: When a shareholder has a cause of . .
Cited – South Australia Asset Management Corporation v York Montague Ltd etc HL 24-Jun-1996
Limits of Damages for Negligent Valuations
Damages for negligent valuations are limited to the foreseeable consequences of advice, and do not include losses arising from a general fall in values. Valuation is seldom an exact science, and within a band of figures valuers may differ without . .
Lists of cited by and citing cases may be incomplete.
Updated: 01 July 2022; Ref: scu.228963
ECJ Community trade mark – Opposition proceedings – Likelihood of confusion – Proof of use of earlier mark – Application for Community word mark ALADIN – Earlier national word mark ALADDIN – Articles 8(1)(b) and 43(2) and (3) of Regulation (EC) No 40/94
[2005] ECR II-2861, [2005] EUECJ T-126/03
European
Updated: 01 July 2022; Ref: scu.228839
Laddie J
[2003] EWHC 2902 (Ch)
England and Wales
Updated: 01 July 2022; Ref: scu.227076
EU (Industrial Policy) Failure of a Member State to fulfil obligations – Directive 98/44/EC – Legal protection of biotechnological inventions – Admissibility – Failure to transpose – Articles 3(1), 5(2), 6(2) and 8 to 12.
[2005] EUECJ C-456/03
European
Updated: 01 July 2022; Ref: scu.226962
[2004] EWHC 1305 (Ch)
England and Wales
Updated: 30 June 2022; Ref: scu.226166
Laddie J
[2004] EWHC 3 (Ch)
England and Wales
Appeal from – Coflexip S A and Another v Stolt Offshore Ms Ltd and others CA 27-Feb-2004
Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Lists of cited by and citing cases may be incomplete.
Updated: 30 June 2022; Ref: scu.226159
Applications for summary judgment – patents infringement and revocation.
[2005] EWHC 984 (Ch)
Updated: 30 June 2022; Ref: scu.225274
PO Patents – Inter Partes Decisions. – As a result of an uncontested application filed under section 13(1) by Cognis Deutschland GmbH and Co KG, it was found that Andrea Urban should be mentioned as a joint inventor in granted patent EP (UK) 1165887 and directed that an addendum slip mentioning her as a joint inventor be prepared for the granted patent for the invention.
Mrs S Williams
[2005] UKIntelP o03905, EP (UK) 1165887
Updated: 30 June 2022; Ref: scu.225031
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The claimant’s expert survey evidence was defective in several ways, but even so there was no evidence of confusion under the claim in passing off. Mere similarities between shapes of the bottles cannot amount to infringement The court considered the effect of a disclaimer within the registration: ‘The effect of a disclaimer is that the trade mark owner recognises that that which is disclaimed is not in itself distinctive of the origin of the goods or services in question. Accordingly, there will be no infringement of the trade mark where the only similarity between the mark and the sign consists of a similarity to those features that have been disclaimed. ‘
The correct comparison is a contextual comparison between the mark and the sign, having first identified both the mark and the sign. In that context the alleged infringements were not proven
Lewison J
[2006] EWHC 2355 (Ch), [2007] ETMR 1
England and Wales
Cited – O2 Holdings Ltd. and Another v Hutchison 3G Ltd (No 2) ChD 23-Mar-2006
. .
Cited – Devinlec Developpement Innovation Leclerc SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) ECJ 12-Jan-2006
ECJ Community trade mark – Figurative mark containing the verbal element ‘quantum’ – Opposition of the proprietor of the national figurative mark Quantieme – Relative ground of refusal – Likelihood of confusion – . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Reed Executive plc and Reed Solutions plc v- Reed Business Information Ltd, Reed Elsevier (UK) Ltd and totaljobs com Ltd ChD 19-Dec-2002
Pumfrey J said: ‘Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. . .
Cited – Societe Des Produits Nestle Sa v Mars UK Limited CA 26-Jul-2004
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 . .
Cited – Arsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
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 – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited – Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer ECJ 29-Sep-1998
In a complaint of trade mark infringement, and when comparing the mark and sign, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa.
Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Mango Sport System Srl Socio Unico Mangone Antonio Vincenzo v Diknak OHIM 2005
(First Board of Appeal of OHIM) The Board held the registration of the trade mark ‘Mango’ for crash helmets potentially to take unfair advantage of the registered mark ‘Mango’ in relation to ladies clothing aimed at fashionable young women. The . .
Cited – Marca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
See Also – L’Oreal Sa and others v Bellure Nv and others ChD 24-May-2006
Action for trade mark infringement and passing off – suggestion that goods of such superior quality that no possibility of confusion. . .
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Appeal from – L’Oreal Sa and others v Bellure Nv and others CA 10-Oct-2007
. .
At first instance – 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
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 . .
See Also – L’Oreal Sa and Others v Bellure Nv and Others CA 21-May-2010
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 30 June 2022; Ref: scu.245192
Community trade mark – Opposition proceedings – Application for word mark FLEXI AIR – Earlier word mark FLEX – Relative ground for refusal – Likelihood of confusion – Request for proof of genuine use – Article 8(1)(b), Article 8(2)(a)(ii) and Article 43(2) of Regulation (EC) No 40/94
T-112/03, [2005] EUECJ T-112/03
European
Updated: 29 June 2022; Ref: scu.223655
[2005] EWHC 419 (Patents), [2006] Ch 337
England and Wales
See Also – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .
See Also – Oakley Inc v Animal Ltd and others PatC 17-Feb-2005
A design for sunglasses was challenged for prior publication. However the law in England differed from that apparently imposed from Europe as to the existence of a 12 month period of grace before applying for registration.
Held: Instruments . .
See Also – Oakley Inc v Animal Ltd and others CA 20-Oct-2005
It was argued that the Secretary of State, when implementing the Directive in the 2001 Regulations, had exceeded his powers in preserving provisions of the Registered Designs Act. The judge had held the Seceretary had exceeded his powers. The . .
Cited – Alemo-Herron v Parkwood Leisure Ltd EAT 12-Jan-2009
EAT TRANSFER OF UNDERTAKINGS: Acquired rights directive
TRANSFER OF UNDERTAKINGS: Varying terms of employment
As a matter of construction of TUPE Reg 5(1), a contractual term entitling employees to . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 June 2022; Ref: scu.223589
[2005] EWCA Civ 224
England and Wales
Updated: 29 June 2022; Ref: scu.223575
The claimant company sought summary judgment against the defendants who had manufactured and sold unauthorised recordings of a concert by the late Mr Hendrix in Sweden in 1969.
Held: The performance was given retrospective protection under the 1988 Act. At the time of the performance, English law would have given no remedy, but the new right was given retrospective effect in the 1988 Act. That Sweden was not at the time a member of the European Community made no effective difference. The MCA v Charly case could be used to fix the defendants with personal responsibility.
[2005] EWHC 249 (Ch), Times 05-May-2005
Copyright Designs and Patents Act 1988 181
England and Wales
Applied – MCA Records Inc v Charly Records Ltd and others (No 5) CA 29-Nov-2001
Thre had been an action for copyright and trade mark infringement. The court considered the personal liability of directors of the company for the costs of the action. . .
At First Instance – Experience Hendrix Llc v Purple Haze Records Ltd and Another CA 3-Aug-2005
Claim in performance rights – challenge to order for security for costs on appeal – evidence available at date of first hearing. . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 June 2022; Ref: scu.222982
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual property rights and rights in licences previously granted.
Lord Kingarth
[2005] ScotCS CSOH – 28, [2005] CSOH 28
Scotland
Cited – Saphena Computing Ltd v Allied Collection Agencies Ltd 1995
The court faced a claim as regards an undeveloped computer system which was sold with bugs ‘warts and all’.
Held: The court spoke of expert evidence that in a bespoke system, bugs were inevitable. . .
Cited – Kaisha v Green Cartridge Company (Hong Kong) Limited PC 30-Apr-1997
(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the . .
Cited – Bank of Scotland v Dunedin Property Investment Co Ltd IHCS 24-Sep-1998
Issue of loan stock supported by charge for ‘all costs charges and expenses incurred’ this included the breakage cost of the bank in setting up interest-rate swap arrangements to protect itself against swings in costs. . .
Cited – British Actors Film Company Limited and Co v Glover 1918
Under a written agreement the owners of the copyright in a dramatic and the musical work agreed to let to the defendant the right of professionally performing the work in the provinces of the United Kingdom, reserving to themselves full liberty to . .
Lists of cited by and citing cases may be incomplete.
Updated: 29 June 2022; Ref: scu.222733
(Approximation Of Laws) Failure of a Member State to fulfill obligations – Directive 2001/29 / EC – Harmonization of certain aspects of copyright and related rights in the information society – Non-transfer within the prescribed period
[2005] EUECJ C-59/04
European
Updated: 29 June 2022; Ref: scu.222055
Trade Marks
The Honourable Mr Justice Patten
[2004] EWHC 2531 (Ch)
England and Wales
Updated: 27 June 2022; Ref: scu.219480
Patent licence
Lord Justice Potter
[2004] EWCA Civ 1331
England and Wales
Appeal from – Celltech and D Ltd v Medimmune Inc ChD 20-May-2004
. .
Appeal from – Celltech and D Ltd v Medimmune Inc ChD 20-May-2004
. .
Lists of cited by and citing cases may be incomplete.
Updated: 27 June 2022; Ref: scu.218837
Application for leave to appeal against rejection of claim for copyright infringement.
Robert Walker LJ
[2001] EWCA Civ 2077
England and Wales
Updated: 27 June 2022; Ref: scu.218581
An indemnity contract is an agreement by indemnifier to make good any loss of another party, and imposes a primary and independent obligation on the promisor.
[1964] 1 WLR 945, [1964] 2 All ER 938
England and Wales
Updated: 23 June 2022; Ref: scu.224226
Patent infringement
The Honourable Mr Justice Mann
[2004] EWHC 2246 (Ch )
England and Wales
Updated: 21 June 2022; Ref: scu.216426
Admission of evidence as to obviousness – experiment
[2004] EWCA Civ 1182
England and Wales
Updated: 21 June 2022; Ref: scu.215993
The Hon Mr Justice Lightman
[2004] EWHC 2225 (Ch)
England and Wales
See Also – Fraser and others v Oystertec Plc and others PatC 7-Nov-2003
. .
See Also – Fraser and others v Oystertec Plc and others 3-Nov-2009
The court considered the meaning of ‘real’ prospects of success: ‘This does not mean that a party can successfully resist summary judgement by suggesting, like Mr Micawber, that something may turn up to save him, though he does not know what: see . .
Lists of cited by and citing cases may be incomplete.
Updated: 21 June 2022; Ref: scu.215919
ECJ The rights recognized by the legislation of a member state on the subject of industrial and commercial property are not affected, so far as their existence is concerned, by article 85 and 86 of the treaty. However, their exercise may fall under the prohibitions imposed by these provisions. (cf. Paragraph 2, summary, judgment in case 24/67 (1968) ECR 55)
A trade-mark right, as a legal entity, does not in itself possess those elements of contract or concerted practice referred to in article 85 ( 1 ); nevertheless, the exercise of that right may fall within the ambit of the prohibitions contained in the treaty each time it manifests itself as the subject, the means, or the consequence of a restrictive practice.
Article 85 therefore is applicable to the extent to which imports of products which bear the same trade-mark and which originate in different member states are prevented because the proprietors have acquired the trade-mark or the right to use it, whether by agreements between themselves or by agreements with third parties. The fact that under national legislation trade-mark rights may originate in legal circumstances other than the abovementioned agreements, such as registration of the trade-mark or its undisturbed use, does not preclude the application of article 85.
Only a restrictive agreement which affects trade between member states to an appreciable extent and which restricts competition within the common market comes under article 85.
If the combination of assignments to different users of national trade-marks protecting the same product has the result of re-erecting impenetrable frontiers between the member states, such a practice may well affect trade between member states and distort competition within the common market.
For article 85 ( 1 ) to apply to a restrictive practice which arose before the treaty entered into force, it is both necessary and sufficient that it continues to produce its effects after that date.
The proprietor of a trade-mark does not enjoy a ‘ dominant position ‘ within the meaning of article 86 merely because he is in a position to prevent third parties from putting into circulation, on the territory of a member state, products bearing the same trade-mark. It is also necessary that the proprietor of the trade-mark should have power to impede the maintenance of effective competition over a considerable part of the relevant market, having regard in particular to the existence and position of any producers or distributors who may be marketing similar goods or goods which may be substituted for them .
The price level of the product does not necessarily suffice to disclose the abuse of a dominant position within the meaning of article 86. It may, however, if unjustified by any objective criteria, and if it is particularly high, be a determining factor.
[1971] ECR 69, C-40/70, R-40/70, [1971] EUECJ R-40/70, [1971] ECR 70
European
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 21 June 2022; Ref: scu.214127
ECJ Under article 177 of the court, when giving a preliminary ruling, is entitled only to pronounce on the interpretation of the treaty and of acts of the institutions of the community or on their validity but may not, on the basis of that article, give judgment on the interpretation of a provision of national law. It may however extract from the wording of the questions formulated by the national court those matters only which pertain to the interpretation of the treaty, taking into account the facts communicated by the said court.
The second paragraph of article 5 of the eec treaty lays down a general duty for the member states, the actual tenor of which depends in each individual case on the provisions of the treaty or on the rules derived from its general scheme.
The exercise of an industrial property right falls under the prohibition set out in article 85 (1) of the treaty each time it manifests itself as the subject, the means or the result of an agreement which, by preventing imports from other member states of products lawfully distributed there, has as its effect the partitioning of the market.
The provisions of article 36 of the treaty may be relevant to a right related to copyright, in the same way as to an industrial or commercial property right.
It is clear from article 36 that, although the treaty does not affect the existence of rights recognized by the legislation of a member state with regard to industrial and commercial property, the exercise of such rights may nevertheless fall within the prohibitions laid down by the treaty.
Article 36 only admits derogations from the free movement of products in order to protect industrial and commercial property to the extent to which such derogations are justified for the purpose of safeguarding rights which constitute the specific matter of such property.
It is in conflict with the rules providing for the free movement of products within the common market for the holder of a legally recognized exclusive right of distribution to prohibit the sale on the national territory of products placed by him or with his consent on the market of another member state on the ground that such distribution did not occur within the national territory. Such a prohibition, which could legitimize the isolation of national markets, would be repugnant to the essential purpose of the treaty, which is to unite national markets into a single market.
The holder of a legally recognized exclusive right of distribution does not occupy a dominant position within the meaning of article 86 of the treaty merely by exercising that right. It is necessary that the holder, alone or jointly with other undertakings in the same group, should have the power to impede the maintenance of effective competition over a considerable part of the relevant market, having regard in particular to the existence of any producers marketing similar products and to their position on the market.
The difference between the controlled price and the price of the product reimported from another member state does not necessarily suffice to disclose an abuse of a dominant position; it may, however, if unjustified by any objective criteria and if it is particularly marked, be a determining factor in such abuse.
C-78/70, R-78/70, [1971] EUECJ R-78/70, [1971] ECR 487
European
Cited – Inntrepreneur Pub Company (CPC) and others v Crehan HL 19-Jul-2006
The tenant had taken on pub leases with ties requiring him to buy beer from companies associated with the landlords. The European Commission had issued a decision and the House was asked whether this was binding on the parties.
Held: . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Lists of cited by and citing cases may be incomplete.
Updated: 21 June 2022; Ref: scu.214135
(Intellectual Property)
T-86/01, [2002] EUECJ T-86/01
European
Updated: 21 June 2022; Ref: scu.213937
ECJ Community trade mark – Regulations (EC) Nos 2868/95 and 40/94 – Costs of opposition proceedings – Partial withdrawal of the trade mark application – Withdrawal of opposition – Tax Refund of Appeal – Obligation to state reasons.
T-156/02, [2004] EUECJ T-156/02
Updated: 21 June 2022; Ref: scu.213805
Lord Justice Peter Gibson Lord Justice Tuckey Lord Justice Longmore
[2003] EWCA Civ 1199
England and Wales
Updated: 19 June 2022; Ref: scu.211415
Where a sign or name had been used overwhelmingly with a descriptive or technical function, it was not validly registered as a trade mark. Name used in relevant public as an indicator of type not a designator of origin.
Times 18-Dec-1998
England and Wales
Updated: 17 June 2022; Ref: scu.82255
(Whitehall Court Chamber)
[1896] UKPC 60
England and Wales
Updated: 14 June 2022; Ref: scu.417395
[2003] EWCA Civ 214
England and Wales
Cited – Smithkline Beecham Plc and Another v Apotex Europe Ltd and others CA 16-Dec-2004
Following its earlier main judgment in the case, the court made use of the CPR to award costs on an appeal. The overall result had been that the patent was found to be valid but not infringed. There had been huge costs. Smithkline sought costs on an . .
Lists of cited by and citing cases may be incomplete.
Updated: 13 June 2022; Ref: scu.201575
[2001] EWCA Civ 1957
England and Wales
Updated: 13 June 2022; Ref: scu.201565
appeal in an action for alleged misuse of confidential information contained in a design drawing for a warehouse.
[2001] EWCA Civ 1613, (2002) 25(1) IPD 25002, [2002] RPC 32, [2002] TCLR 5
England and Wales
Updated: 13 June 2022; Ref: scu.201398
[2001] EWCA Civ 748
England and Wales
Updated: 11 June 2022; Ref: scu.201071
patents
[2004] EWHC 1264 (Ch)
England and Wales
Updated: 11 June 2022; Ref: scu.200350
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 respondent had successfully objected to the application to register the trade mark on the basis of it having been made in bad faith.
Held: The appeal failed. The standard for dishonesty set out in Twinsectra was the test applicable under the 1994 Act for bad faith in a trade mark application. It was a mixture of objective and subjective elements; whether the applicant’s state of knowledge was such that his decision to apply for registration would be regarded by persons adopting proper standards as being in bad faith.
Sir William Aldous said: ‘The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.’
Lord Justice Pill Lady Justice Arden Lord Jusice Aldous
[2005] FSR 10, [2004] EWCA Civ 1028, Times 19-Aug-2004
Trade Marks Act 1994 5(4)(a), Council Directive 89/104/EEC
England and Wales
Cited – Twinsectra Ltd v Yardley and Others HL 21-Mar-2002
Solicitors acted in a loan, giving an undertaking as to its application. In breach of that undertaking they released it to the borrower. The appellants appealed a finding of liability as contributors to the breach.
Held: ‘Money in a . .
Cited – Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd PatC 12-Jun-1998
The court set out tests of bad faith for applications for the registration of trade marks: ‘I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of . .
Cited – Surene Pty Ltd v Multiple Marketing Ltd ETMR 2000
(Cancellation Division) (year?) The proprietor, Multiple Marketing, distributed the applicant for revocation’s products under the trade mark BE NATURAL.
Held: The application had been made in bad faith: ‘Bad faith is a narrow legal concept in . .
Cited – Senso Di Donna’s Trade Mark ETMR 2001
The First Cancellation Division considered what would count as bad faith in an application for a trade mark: ‘Bad faith is a narrow legal concept in the CTMR system. Bad faith is the opposite of good faith, generally implying or involving, but not . .
Cited – Lancome Parfums et Beaute and Cie’s Trade Mark ETMR 2001
Bad faith in application for trade mark . .
Approved – ‘Daawat’: Application No 2032467 TMR 10-Jun-2002
cw Appeals to the Appointed Person Decisions – Trade Marks – Invalidity . .
Cited – Regina v Ghosh CACD 5-Apr-1982
The defendant surgeon was said to have made false claims for payment for operations, and was charged under the 1968 Act. He claimed to have been entitled to the sums claimed, and denied that he had been dishonest. The court considered the meaning of . .
Cited – Royal Brunei Airlines SDN BHD v Tan PC 24-May-1995
(Brunei) The defendants were a one-man company, BLT, and the one man, Mr Tan. A dishonest third party to a breach of trust was liable to make good a resulting loss even though he had received no trust property. The test of knowledge was an objective . .
Cited – Jules Rimet Cup Ltd v The Football Association Ltd. ChD 18-Oct-2007
The parties disputed on preliminary issues the ownership of the rights in the trade mark ‘World Cup Willie’. The claimant had set out to register the mark, and the defendant gave notice of its intention to oppose. The claimant now alleged threat and . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 June 2022; Ref: scu.199567
(Judgment)
T-117/02, [2004] EUECJ T-117/02
European
Updated: 11 June 2022; Ref: scu.198749
Community mark – Absolute grounds for refusal.
T-399/02, [2004] EUECJ T-399/02
European
Updated: 10 June 2022; Ref: scu.196694
(Judgment)
T-124/02, [2004] EUECJ T-124/02
European
Updated: 10 June 2022; Ref: scu.196692
The author had executed an assignment of the reversionary copyright interests in his musical works. The parties sought a declaration as to whether such an assignment was capable of being effective in law.
Held: The agreement was effective.
The Honourable Mr Justice Patten
[2004] EWHC 766 (Ch), Times 20-May-2004
Copyright Act 1956 11, Copyright Act 1911 5(2)
England and Wales
Cited – Redwood Music Ltd v Francis, Day and Hunter 1978
The court asked about the history of the assignability of a copyright reversion: ‘The Act of 1911 was repealed by the Copyright Act 1956; and the Act of 1956 contains no provision comparable to the proviso to section 5(2) of the Act of 1911. However . .
Appeal from – Novello and Co Ltd v Keith prowse Music Publishing Co Ltd CA 14-Dec-2004
The musician had in the 1940s assigned his copyright to the respondent. At that time a reversion in copyright could only be assigned by will. In 1973, after the 1956 Act he assigned the reversion to the respondent also. The appellant now contended . .
Lists of cited by and citing cases may be incomplete.
Updated: 10 June 2022; Ref: scu.195753
Mann, The Honourable Mr Justice Mann
[2004] EWHC 768 (Ch)
England and Wales
Updated: 10 June 2022; Ref: scu.195496
There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held ‘Gerri’ and ‘Kelly’ confusingly similar (by reason of aural confusion) and that there would be infringement under Art.5.1(b) unless there was an Art. 6.1 defence. Use as a trade mark was not ‘appropriate for determining the scope of Art. 6’. It was enough that ‘Kerry’ was of geographical significance to bring it within the scope of Art. 6, even though it also had some trade mark significance.
‘The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement.’
[2004] EUECJ C-100/02
European
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Lists of cited by and citing cases may be incomplete.
Updated: 08 June 2022; Ref: scu.192237
ECJ (Judgment) Community trade mark – Three-dimensional mark – Shape of a bottle – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94.
T-305/02, [2003] EUECJ T-305/02
European
Updated: 08 June 2022; Ref: scu.189906
(Order)
T-235/02, [2003] EUECJ T-235/02
European
Updated: 08 June 2022; Ref: scu.189905
ECJ Judgment – Community trade mark – Regulation (EC) No 40/94 – Absolute grounds for refusal – Descriptive mark – Distinctive character acquired through use – Word mark TDI – Right to be heard – Scope of the duty to state reasons – Consequences of a breach of the duty to state reasons.
T-16/02, [2003] EUECJ T-16/02
European
Updated: 08 June 2022; Ref: scu.189902
[2002] EWHC 2140 (TCC)
England and Wales
Updated: 08 June 2022; Ref: scu.189189
[2002] EWHC 2912 (TCC)
Updated: 08 June 2022; Ref: scu.189187
Judgment
T-348/02, [2003] EUECJ T-348/02
European
Updated: 08 June 2022; Ref: scu.188586
Copyright in a Java-based software program partly adapted and derived from an earlier MathCAD-based program. Interpretation of uncertain and potentially nonsensical terms of a commercial contract and effect of ICS v West Bromwich Building Society and United Camp Chemicals Limited v ACE Insurance; retrospective effect of a contract and effect of Trollope and Colls v Atomic Power Station and Northern and Shell Plc v John Laing Construction Limited; retention of copyright and Warwick Film Production Ltd v Eisinger; joint authorship and Fylde Microsystems Ltd v Key Radio Systems Ltd and implication of terms governing copyright and Ray v Classic FM.
[2003] EWHC 760 (TCC)
England and Wales
Updated: 08 June 2022; Ref: scu.187336
ECJ Regulation (EC) No 40/94 – Article 115 – Rules in force governing languages at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) – Plea of illegality – Principle of non-discrimination.
C-361/01, [2003] EUECJ C-361/01P
European
Updated: 08 June 2022; Ref: scu.186325
[2003] EWHC 1928 (Ch)
England and Wales
Updated: 08 June 2022; Ref: scu.185926
(Judgment) Protected designations of origin – Regulation (EEC) No 2081/92 – Regulation (EEC) No 1107/96 – ‘Grana Padano’ freshly grated – Specification – Convention between two Member States – Condition that the cheese is grated and packaged in the region of production – Articles 29 EC and 30 EC – Justification – Whether the condition may be relied on against third parties – Legal certainty- Publicity
C-469/00, [2003] EUECJ C-469/00
European
Updated: 07 June 2022; Ref: scu.182714
Allegation of breach of confidence
The Honourable Mr Justice Jacob
[2003] EWHC 728 (Ch)
England and Wales
Cited – G D Searle and Co Ltd v Celltech Ltd CA 1982
The court was asked as to an employee’s covenant now said to be in restraint of trade.
Held: In disputes between employers and ex-employees courts will usually seek to protect the rights of employees to advance their chosen trade and . .
Lists of cited by and citing cases may be incomplete.
Updated: 07 June 2022; Ref: scu.181379
Judgment – Non-contractual liability – Directive 89/104/EEC – Trade marks – Official euro symbol.
T-195/00, [2003] EUECJ T-195/00
European
Updated: 07 June 2022; Ref: scu.180825
Lord Justice Peter Gibson, Mr Justice Blackburne Lord Justice Carnwath
[2003] EWCA Civ 401
England and Wales
Cited – Miller v Jackson CA 6-Apr-1977
The activities of a long established cricket club had been found to be a legal nuisance, because of the number of cricket balls landing in the gardens of neighbouring houses. An injunction had been granted to local householders who complained of . .
See Also – WWF – World Wide Fund for Nature (Formerly World Wildlife Fund); World Wildlife Fund Inc v World Wrestling Federation Entertainment Inc CA 27-Feb-2002
The claimant sought enforcement of a contract restricting the use by the appellant defendant of the initials ‘WWF’ in their trading. The agreement had been reached in settlement of an action for breach of the claimant’s trade mark rights. The . .
See Also – WWF-World Wide Fund for Nature and Another v World Wrestling Federation Entertainment Inc ChD 16-Feb-2006
. .
See Also – WWF (World Wide Fund for Nature) and Another v World Wrestling Federation Entertainment Inc CA 2-Apr-2007
The parties had disputed use of the initals WWF, with a compromise reached in 1994 allowing primary use by the Fund with restricted use by the Federation. The Federation now appealed an award of damages made after a finding of a breach of the . .
Lists of cited by and citing cases may be incomplete.
Updated: 07 June 2022; Ref: scu.180324
The claimants claimed damages for the sale by the defendants in the UK of CD’s manufactured for sale only in the far East. The defendants challenged the right of a claimant phonographic society to have the right to sue on behalf of its members.
Held: The right to issue representative actions varies with the nature of the claim. Did members of the society have a common interest in preventing parallel imports as opposed to preventing copyright piracy? Yes. The claims were all of the same nature and it was to be expected that the members would have a complaint. It was not necessary to require the claimants to circularise their members to obtain specific authority under CPR 19.6(2).
The Vice-Chancellor
[2003] EWHC 470 (Ch)
Copyright, Designs and Patents Act 1988 18 22 33, Civil Procedure Rules 19.6(2)
England and Wales
Cited – Bellefield Computer Services and others v E Turner and Sons Limited and others CA 18-Dec-2002
The defendants had carried out works of construction on the premises. They subcontracted the design, but not the supervision, of the works to architects. Years later there was a fire, which spread rapidly because of negligence in the design of a . .
Cited – John v Rees and Others; Martin and Another v Davis and Others ChD 1969
The Court was asked as to the validity of proceedings at a meeting of the members of the local Labour Party which had broken up in disorder. The proceedings were instituted by the leader of one faction on behalf of himself and all other members of . .
Cited – EMI Records v Riley ChD 1981
The defendant to an action for an injunction by the plaintiff on behalf of the British Phonographic Industry Copyright Society, said that the company did not properly represent the members of the Society.
Held: It could be inferred that all . .
Cited – Columbia Pictures Industries Inc v Robinson ChD 1986
The plaintiff had obtained an Anton Piller order against a defendant whose business consisted almost entirely in the manufacture and sale of pirated videos.
Held: The injunction had been obtained for an improper purpose and without full . .
Cited – Haarhaus v Law Debenture Trust Corporation ChD 1988
The plaintiffs brought an action on behalf of themselves and all other holders of promissory notes issued by a Nigerian Bank to restrain the trustee of the noteholders’ trust deed, from publishing details as to the votes cast at a meeting of . .
Cited – Russell-Cooke Trust Co v Elliott ChD 26-Mar-2001
The case concerned the administration of investment schemes set up by a solicitor into whose practice the Law Society had intervened.
Held: It was directed that a circular be sent to all investors to determine their views. . .
Cited – Emerald Supplies Ltd and Another v British Airways Plc ChD 8-Apr-2009
The claim was for damages after alleged price fixing by the defendants. The claimants sought to recover for themselves and as representatives of others who had similarly suffered. The defendants sought that the representative element of the claim be . .
Cited – Twentieth Century Fox Film Corp and Others v British Telecommunications Plc ChD 28-Jul-2011
The claimant rights holders sought an order to require the defendant broadband internet provider to deny access to its users to websites which were said to facilitate the distribution of infringing copies of their films. An earlier judgment had . .
Lists of cited by and citing cases may be incomplete.
Updated: 07 June 2022; Ref: scu.179742
(Judgment)A graphic representation within article 2 had to enable the sign to be represented visually, and the representation clear and precise, self-contained, easily accessible, intelligible, durable and objective to be registered as a trade mark.
‘the essential function of a trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin and that, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.’
C-273/00, Times 27-Dec-2002, [2002] EUECJ C-273/00, [2003] RPC 38
European
Cited – Libertel Groep BV v Benelux-Merkenbureau (Judgment) ECJ 6-May-2003
Though a sufficiently distinctive colour was capable of being registered as a trade mark, the court must be careful not to allow registrations in such a manner as unduly to restrict the range of colours available to traders. A sample of a colour had . .
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.
Updated: 06 June 2022; Ref: scu.178717
Aldous LJ said: ‘Pumfrey J in the Decon case suggested that the court’s task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under s 10(2), adopts the attitude of the average reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, that I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a person has made of his mark. Thus the court should inform itself of the nature of trade and then decide how the notional consumer would describe such use.’
Mr Justice Scott Baker, Lord Justice Waller, Lord Justice Aldous
[2002] IPandT 299, [2002] EWCA Civ 1828
England and Wales
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.178560
ECJ Community trade mark – Opposition – Relative grounds for refusal – Similarity between two trade marks – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 – Application for a figurative Community trade mark containing the word ‘Matratzen’ – Earlier word trade mark MATRATZEN.
Case T-6/01.
‘In this context, the Court of Justice has held that the assessment of the similarity between the two marks must be based on the overall impression created by them, in light, in particular, of their distinctive and dominant components . . Consequently, it must be held that a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all other components of the mark are negligible with the overall impression created by it . . Wiith regard to the assessment of the dominant character of one or more components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various marks within the arrangement of the complex mark.’
T-6/01, [2002] EUECJ T-6/01
See Also – Matratzen Concord v OHMI (Order) ECJ 28-Apr-2004
. .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.177924
Pill LJ, Lord Walker of Guestingthorpe
[2003] RPC 25, [2002] EWCA Civ 1534
England and Wales
See Also – Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc ChD 20-May-1998
It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. . .
See Also – 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 . .
See Also – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc ChD 19-Feb-2008
. .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.178093
cw Inter Partes Decisions – Trade Marks – Opposition
Mr M Reynolds
2009499, OPP 43532, [1998] UKIntelP o12498
See Also – EE Elizabeth Emanuel (Trade Mark: Revocation) IPO 17-Oct-2002
IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the . .
See Also – Elizabeth Emanuel (Trade Mark: Opposition) IPO 17-Oct-2002
IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.175601
Patents – territoriality.
[2002] EWHC 737 (Ch), [2002] RPC 50
England and Wales
Appeal from – Stena Rederi Aktiebolag and Another v Irish Ferries Ltd CA 6-Feb-2003
A ferry plied its way between Dublin and Holyhead, coming into English territorial waters three or four times a day, and for up to three hours on each occasion. The claimants asserted that the construction of the hull infringed its patent.
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.174240
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 established that the essential functional features of that shape were attributable only to the technical result. Additional embellishments did not make it registerable, and the existence of alternate ways of achieving the same technical result did not allow registration. The court accepted that art.3(1)(a) imports both limbs of art.2. Distinctiveness is, therefore, an issue under both art.3(1)(a) and art.3(1)(b). Only a single question is posed in relation to distinctiveness of origin, which is whether the sign is capable of distinguishing the goods of one undertaking from those of another in the mind of the consumer, and a positive conclusion (albeit at that level of identification) is required.
GC Rodriguez Iglesias, P. Jann, F. Macken, N. Colneric, S. von Bahr, C. Gulmann, D. A. O. Edward, A. La Pergola, J.-P. Puissochet, J. N. Cunha Rodrigues etc
Times 20-Jun-2002, C-299/99, [2002] ETMR 955, [2002] EUECJ C-299/99, [2003] Ch 159, [2003] RPC 2
European
Reference from – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
See Also – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed . .
Cited – David West Trading As Eastenders v Fuller Smith and Turner Plc CA 31-Jan-2003
The appellant sought a declaration of invalidity as regards the defendant’s registered mark ‘ESB’. It was claimed to have come to be used as a general designation of certain kinds of beer.
Held: The Philips decision appeared to supercede the . .
Referred to – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
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 – Dyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
Cited – Nichols plc v Registrar of Trade Marks ECJ 16-Sep-2004
The applicant sought to register the name ‘Nichols’ as a trade mark for food and drink vending machines. The application was rejected as being common. The registrar had checked in the London telephone directory and discovered that the name appeared . .
Cited – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed . .
Cited – Koninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.174036
1. Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, under which marks which are devoid of any distinctive character are to be refused registration, draws no distinction between different categories of mark. Accordingly, it is not appropriate to apply more stringent criteria or impose stricter requirements when assessing the distinctiveness of three-dimensional marks comprising the shape of the goods themselves than are applied or imposed in the case of other categories of mark. In order to assess a mark’s distinctiveness, it is necessary to take account of all relevant elements linked to the specific circumstances of the case and one such element is the fact that it cannot be excluded that the nature of the mark in respect of which registration is sought might influence the perception which the targeted public will have of the mark.
The distinctiveness requirements applicable to three-dimensional marks comprising the shape of the goods cannot be less strict than those applicable to word marks, since consumers are more accustomed to directing their attention to the latter.
2. The three-dimensional marks consisting of cylindrical torch shapes in respect of which registration was sought for apparatus for lighting and accessories for such apparatus are devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, since a cylinder is a common shape for a torch which corresponds to shapes commonly used by other torch manufacturers on the market and thus, rather than enabling the product to be differentiated and linked to a specific commercial source, gives the consumer an indication as to the nature of the product. Moreover, the aesthetic qualities and the unusually original design of the shapes claimed as marks appear, as a result of those features, as variants of a common torch shape rather than as shapes capable of differentiating the goods and indicating, on their own, a given commercial origin.
T-88/00, [2002] EUECJ T-88/00
European
Updated: 06 June 2022; Ref: scu.173812
The second step of Windsurfing requires the judge to adopt the mantle of the skilled person. This is particularly important where, as in this case, the attack upon the patent is based upon what was generally known in the art.
Lord Justice Aldous, Mance and Latham LJJ
[2002] EWCA Civ 465, [2003] FSR 8
England and Wales
Cited – Windsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
Cited – Seb SAa v Societe De’Longhi Spa CA 4-Jul-2003
The claimant’s action for patent infringement had been dismissed on the basis that the patent was invalid for obviousness.
Held: There was material before the judge on which he could properly conclude as he did on the presence of common . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.170127
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 restrictions must not allow arbitrary discrimination or be a disguised restriction on trade between member states. The mark owners were allowed to prevent the repackaging so long as it did not operate to prevent trade.
GC Rodriguez Iglesias, President and Judges P. Jann, C. Gulmann, D. A. O. Edward, M. Wathelet, R. Schintgen, V. Skouris, J. N. Cunha Rodrigues and C. W. A. Timmermans Advocate-General F. G. Jacobs
Times 23-May-2002, C-143/00, [2002] EUECJ C-143/00, [2002] ECR I-3759
European
Answered by – Boehringer Ingelheim Kg, Boehringer Ingelheim Pharma Gmbh and Co Kg, Swingward Limited v Boehringer Ingelheim Kg, Boehringer Ingelheim Pharma Gmbh and Co Kg, Boehringer Ingelheim Limited-And-Dowelhurst Limited CA 5-Mar-2004
. .
Cited – L’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 06 June 2022; Ref: scu.170259
Lord Cameron of Lochbroom
[1999] ScotCS 195
Scotland
Appeal from – William Grant and Sons Ltd v Glen Catrine Bonded Warehouse Ltd OHCS 11-May-1999
The test for passing off is objective, and not dependant upon the intention of the defendant. Is it reasonably foreseeable that confusion would arise? A close similarity of the market also affected the issue. . .
Lists of cited by and citing cases may be incomplete.
Updated: 05 June 2022; Ref: scu.169539