Bringing you monthly news of key developments in intellectual property law
TRADE MARKS AND PASSING OFF
ECJ upholds Advocate General’s Opinion in Barbara Becker v (1) Harman International Industries, Inc (2) OHIM Case C-51/09, 24 June 2010
The ECJ has followed the Advocate General’s opinion in setting aside a decision of the EU General Court, which found a likelihood of confusion of the two marks BECKER and BARBARA BECKER.
For the full text of the decision, click here.
In the matter of trade mark application no 2528977 in the name of the Chartered Institute of Patent Agents, BL 0-215-10, 27 May 2010
The Chartered Institute of Patent Attorney (CIPA) applied to register the word mark IP TRANSLATOR as a trade mark for “education; providing of training; entertainment; sporting and cultural activities” in class 41. The application was refused and CIPA appealed to the Appointed Person. The Appointed Person has made a reference to the ECJ to clarify the use of class headings in trade mark applications.
For the full text of the order, click here.
CM Capital Markets Holding, SA v OHIM cases T-490/08 and T-563/08, 22 June 2010, EU General Court
The EU General Court has found that there was no likelihood of confusion under Art. 8(1)(b) of the CTM Regulation between the word mark CARBON CAPITAL MARKETS, a figurative mark including those words and earlier marks consisting of the words ‘Capital Markets’. Although the services of the marks were identical, the Court found the marks were not visually similar to the earlier marks as the word and graphic elements of the marks applied for formed a different graphic whole.
For the full text of the decisions, click here and here.
Portakabin Ltd and another v Primakabin BV, Case C-558/08, 8 July 2010
The ECJ has given its ruling on the questions referred to it by the Dutch Supreme Court (Hoge Raad der Nederlanden) in the case of Portakabin v Primakabin.
Following the Google France decision, (to see our Law-Now on this decision click here and for the subsequent ECJ decision on the Austrian adwords case click here) the ECJ has ruled that the use of keywords constitutes ‘use’ for trade mark purposes and that unless the average internet user can without difficulty identify the origin of the goods, it is likely that use will result in trade mark infringement.
In addition, the use of a trade mark in which rights have been exhausted is permitted as a keyword for the second hand sale of genuine goods, unless there are legitimate reasons to oppose further commercialisation of those goods, which may be dependent on the way they are being presented and marketed.
For the full text of the decision, click here.
Coty Prestige Lancaster Group GmBH v Simex Trading AG, ECJ, Case C-127/09, 3 June 2010
The ECJ considered the concept of “putting on the market” under Article 7 of the Trade Marks Directive in the context of perfume testers which were for demonstration purposes and marked “not for sale”. On the facts, the testers remained in the ownership of the brand owner and there was no transfer of property in them to distributors. The ECJ found that in the absence of evidence to the contrary, the brand owner could not be said to have impliedly consented to the putting of the testers on to the market.
To see the full text of the decision, click here.
Omega Engineering Inc v Omega SA (Omega AG) (Omega Ltd) [2010] EWHC 1211, 28 May 2010, High Court
The High Court has allowed a claim for summary judgment by Omega US (engineering) in a breach of contract case for a co-existence agreement between the parties, and has dismissed Omega Swiss’ (watchmakers) appeal against a related IPO decision which concluded that the terms of the coexistence agreement represented a bar to Omega Swiss’ opposition of Omega US’ application to register the trade mark OMEGA in relation to particular goods.
The case provides a run-down of how the NICE trade mark classification system has evolved since the early 1980s and provides that, in the UK at least, prior coexistence agreements can be held to be significant and relevant to application and opposition proceedings at the IPO.
To see the full text of the decision, click here.
Numatic International Limited v Qualtex UK Ltd [2010] EWHC 1237, 28 May 2010, High Court
The High Court has held that a replica prototype of the Henry vacuum cleaner, which Qualtex (UK) Limited (“Qualtex”) threatened to put on the market, constituted passing off. The omission of the face and the name on the vacuum cleaner could still result in the public being mislead as the overall shape combined with the black bowler hat gave the overall impression of being a genuine Henry cleaner.
To view the full text of the decision, click here.
Order under the Companies Act 2006 – In the matter of application for a change of company name registration by Zurich Insurance Company
The Company Names Tribunal, which publishes the decisions of company names adjudicators under section 69 of the Companies Act 2006, has for the first time (in a substantive hearing) rejected an application for a change of name. Zurich Insurance Company applied to change the name of Zurich Investments Ltd, which had been registered in 1999. The tribunal found that the adoption of the name of the defendant was more coincidence than conspiracy; the motivation behind its incorporation being the continuation of a company name which the directors had held for ten years. In 1989, while the claimant had a business in the UK, it was not so widely known as it is now, following company acquisitions and a number of high-profile advertising activities. Although by 1999 the claimant was more widely known, there was nothing to suggest that the defendant's directors' motives reflected anything other than good faith. Consequently, Zurich Investments Ltd had a defence under section 69(6) of the Companies Act 2006.
To see the full text of the decision, click here.
Best Buy v Worldwide Sales Corporation, [2010] EWHC 1666, 8th July 2010, High Court
Mr Justice Floyd has given a judgment that gives a literal and strict approach to one of the commonly relied upon exceptions to the statutory threats provisions in the Trade Mark Act 1994, opining that the exception relating to ‘the supply of services under the mark’ should not extend to the ‘offer of supply’ of services, and confirming that letters before action and related undertakings should not go further than the exceptions, otherwise the communication could constitute an actionable threat. Mr Justice Floyd also considered the circumstances in which without prejudice privilege may apply to threatening letters, concluding that even the opening shot in negotiations can, depending on the circumstances, amount to bona fide without prejudice correspondence and be privileged accordingly.
To view the full text of the decision, click here. For our full Law-Now on this decision, click here.
PATENTS
Re: Medeva's SPC applications [2010] EWCA Civ 700, 23 June 2010, Court of Appeal
The Court of Appeal has made a reference to the ECJ concerning interpretation of the SPC Regulation. In particular, the following questions were referred:
(a) What is the test by which to determine whether “the product is protected by a basic patent in force” for the purposes of Article 3(a)?
(b) Should a different test be applied in cases where the product is a multi-disease vaccine?
(c) Is it sufficient for the purposes of Article 3(a), in the context of a multi-disease vaccine, that the basic patent in force protects one aspect of the product?
(d) For the purposes of Article 3(b) may the product be limited to that part of a multi-disease vaccine as is protected by the basic patent in force?
To view the full text of the decision, click here, and to see our full Law-Now on this decision, click here
KCL Licensing v Smith and Nephew, [2010] EWHC 1487, 23 June 2010, High Court
The High Court has ruled that a patent in the name of a company can take priority from an earlier application made in the name of an employee inventor who had previously signed a contract assigning future inventions to his employer. The effect of the contract and s.7(2) Patents Act 1977 was to legally assign title in the priority application to the employer.
The case also addressed contributory infringement and the matter of to whose intention s.60(2) relates. The relevant intention (where means essential are intended to be used to put the invention into effect) is that of the person supplied.
To view the full text of the decision, click here.
