Bringing you monthly news of key developments in intellectual property law.
Pavel Maslyukov v Diageo Distilling Ltd and another (High Court)
The High Court has upheld a decision of the trade marks hearing officer that a trade mark applicant who applied for trade marks specifying malt whisky, the trade marks applied for being the names of distilleries formerly owned by Diageo, but now closed, had acted in bad faith. Having concluded that he was unable to decide on an appeal by Diageo against the hearing officer’s refusal of Diageo’s opposition on the basis of its right to prevent passing off, the judge nonetheless gave a detailed obiter judgment disagreeing with the hearing officer’s decision on this point, setting out how goodwill can continue to subsist even where a business has ceased trading under the mark in question.
For the full text of the decision, click here.
Google Inc. v Louis Vuitton Malletier, Google France v Viaticum Luteciel and Google v CNHRR (ECJ)
The European Court of Justice (“ECJ”) handed down its long-awaited judgment in relation to the question of whether or not Google’s ‘AdWords’ system, which allows the sale of keywords to trigger sponsored advertising links on its search engine, could amount to trade mark infringement.
The ECJ agreed with the Advocate General in finding that the purchase and sale of keywords which were third party trade marks was not, of itself, trade mark infringement, so Google was not liable for these aspects. However, if the display of the sponsored advertising link could mislead an ‘average internet user’ as to the origins of the goods/services, it may result in an infringement by the advertiser.
For the full text of our Law-Now on this decision, click here.
Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and another (ECJ)
The facts of the case were very similar to those in the cases which were referred to the ECJ in the recent Google France case (Google Inc. v Louis Vuitton Malletier, Google France v Viaticum Luteciel and Google v CNHRR (C-236/08, C-237/08, C-238/08)). In this case, Google (who was not a party to the litigation) sold keywords (namely ‘Edi Koblmüller’ and ‘Bergspechte’) to the defendant, which when searched for on Google, triggered the display of sponsored links to the defendant’s website, which advertised ‘trekking and nature tours’. The claimant, however, who also sold ‘trekking and nature tours’ from its own website, and was therefore a direct competitor of the defendant, already owned the word and figurative trade mark for “BergSpechte – Outdoor-Reisen und Alpinschule Edi Koblmüller”.
On 19 October 2007, the claimant successfully applied for injunctive relief from the Regional Court of first instance to prevent the defendant from using these keywords to direct users of Google by link to its own website. On 7 December 2007, the Higher Regional Court varied the interim injunction in part. Thereupon BergSpechte, trekking.at Reisen and Mr. Guni filed an appeal against that decision to the Austrian Supreme Court.
Following an appeal by the defendant, the Austrian Supreme court decided to refer various points of law to the ECJ, as to whether the use of the trade mark by the defendant constituted use that the claimant should have been entitled to prevent.
For the full text of our Law-Now on this decision, click here.
Barbara Becker case, (Advocate General)
Advocate General Cruz Villalon has given an opinion in which he pointed out that there is no hard-and-fast rule that a mark consisting of a forename and a surname is likely to be confused, for the purposes of Article 8(1)(b) of the CTM Regulation (40/94/EC, now replaced by 2009/207/EC), with an earlier registered mark that consists of the same surname. He said that the CFI (now the EU General Court) had purported to apply such a rule in finding that the word marks BARBARA BECKER and BECKER were confusingly similar for Article 8(1)(b) purposes, and that the court's judgment should therefore be set aside and remitted back to the EU General Court for re-examination, including, in particular, a proper global assessment of the overall impression given by the marks in question.
To see the full text of the opinion, click here.
Twentieth Century Fox Film Corporation & Ors v Newzbin Ltd (High Court)
The High Court has upheld a claim by Fox and other film makers for copyright infringement against the Defendant, Newzbin Ltd, arising from its operation of a website called Newzbin.
The Defendant was found liable to the Claimants for infringement of their copyrights on three basis: (i) by authorising the copying of the Claimants’ films; (ii) procuring and engaging with its premium members in a common design to copy the Claimants’ films; and (iii) communicating the Claimants’ films to the public.
To see the full text of our Law-Now on this decision, click here.
Vercoe & Ors v Rutland Fund Management Ltd & Ors (High Court)
The High Court considered the possible remedies for breach of confidentiality and in particular the circumstances in which it would be appropriate to order a damages award or an account of profits. The High Court held there had been a breach of confidentiality and that the correct remedy was an award of damages rather than an account of profits (as had been sought by the claimants).
To see the full text of the decision, click here.
Update on Digital Economy Bill
The Government is pressing ahead with plans to pass the Digital Economy Bill into law before the general election on 6 May. The Bill would introduce plans to require Internet Service Providers (ISPs) to send notifications to customers at the behest of rights holders, and would require ISPs to keep lists of alleged infringements (together known as the ‘initial obligations’). More controversially, the draft legislation includes the grant of powers to the Secretary of State to draft secondary legislation to require ISPs to take ‘technical measures’ against Internet users accused of multiple infringements and to introduce a new regime requiring courts to order ISPs to block access to websites which may be associated with copyright infringement.
To see the full text of our Law-Now on this issue, click here.
