Bringing you regular news of key developments in intellectual property law.
TRADE MARKS AND PASSING OFF
Martin Y Paz Diffusion SA v David Depuydt and another, Case C-661/11, 19 September 2013
The ECJ has held in its preliminary ruling that a national court must uphold a prohibition imposed by a proprietor of a trade mark on a third party not to use an identical sign if there is no justification for the third party to continue using the mark (such as the “own name” defence). A trade mark proprietor cannot be prevented from asserting its exclusive rights by withdrawing its consent to a third party’s use of a sign identical to its trade mark in relation to identical and similar goods. However, it should be noted that in this case there was no written licence between the parties. The ruling was a response to a reference from the Belgian courts.
For the full text of the decision, please click here.
Centrotherm Systemtechnik GmbH v OHIM and Centrotherm Clean Solutions GmbH & Co KG, Cases C 609/11 P and C 610/11 P, 26 September 2013
In this case, the ECJ considered the OHIM Board of Appeal’s powers to take into account evidence of trade mark use which is submitted by a CTM owner (in response to an application to revoke the CTM) after the specified deadline. The ECJ held that under the CTM Regulation, the Board of Appeal has discretion to consider late evidence, provided that (a) some initial evidence has been provided within the time limit, and (b) the initial evidence was not entirely irrelevant to the establishment of genuine use of the mark.
This decision reversed a prior decision of the General Court. The ECJ held that the General Court had wrongly interpreted Rule 40(5) of Regulation 2868/95/EC (which implements the CTM Regulation) as a restriction on the Board of Appeal’s discretion to consider the additional evidence.
For the full text of the decisions, please click here and here.
Golden Balls Ltd v OHIM, Cases T-437/11 and T-448/11, 16 September 2013
The General Court has overturned a decision of the OHIM Board of Appeal that a CTM application for the sign GOLDEN BALLS should be refused because of its alleged conceptual similarity with the earlier CTM, BALLON D’OR. The General Court held that whilst a linguistic difference does not automatically exclude a conceptual similarity, the difference and the need for a translation is capable of preventing an immediate conceptual comparison by the relevant public. The marks were held to have, at most, a weak or even very weak degree of conceptual similarity for the reasonably informed and observant relevant public, in particular the francophone public.
For the full text of the decisions, please click here and here.
Maier and another v ASOS Plc and another [2013] EWHC 2831 (Ch), 19 September 2013
Assos, the specialist cycling wear brand, failed in its trade mark and passing off action against Asos, the online fashion retailer, which sells third party brands and also its own label clothing under the ASOS brand name. Assos had its Community Trade Mark partially revoked for non use, but the Court did not accept Asos’s further counterclaim for partial invalidity based on prior rights under Article 8(4) of the CTM Regulation. The case illustrates the practical difficulties in drafting trade mark specifications and demonstrating genuine use.
For the full text of the decision, please click here.
Société Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Ltd trading as Monte Carlo Casino Entertainment [2013] EWPCC 38, 11 September 2013
The Patents County Court has dismissed a claim for passing off and infringement of the community trade marks MONTE CARLO and CASINO DE MONTE-CARLO, brought by a casino operator against the owner of a business that had been offering casino party packages for weddings and corporate events for almost 20 years under the name Monte Carlo Casino Entertainment. The case offers useful guidance as to the determination of who the “average consumer” is, and as to the potential relevance of marketing practices and business models to the degree of attention the average consumer will be said to have when assessing likelihood of confusion.
For the full text of the decision, please click here.
PATENTS
Lantana Ltd v Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat), 4 September 2013
The High Court has dismissed an appeal against a decision of the IPO to reject a patent application for a method of transferring data between a local and remote computer without requiring a continuous connection between the two. The Court held that, although the invention was novel and inventive, there was no technical contribution and the invention was unpatentable. The applicant referred to examples of previous cases in which computer-related inventions were held to be patentable. However, the Court warned against relying so heavily on previous case law, stating that they simply showed that such inventions can be patentable in some cases, not that the invention in this case was patentable. This case highlights the difficulty in obtaining patent protection for computer-implemented inventions.
For the full text of the decision, please click here.
Airscience Technology International Ltd v Wallenius Water AB BL O/350/13, 29 August 2013
The principles of issue estoppel, cause of action estoppel and the rule in Henderson v Henderson have been discussed in an application to the IPO for revocation of a patent. The hearing officer decided that the applicant had justifiable reasons for not previously litigating the validity of the patent.
Therefore, estoppel did not apply. The hearing officer also rejected that the action was an abuse of process. He considered that this decision was supported by the public interest in not maintaining invalid patents on the register.
For the full text of the decision, please click here.
COPYRIGHT
Nintendo Co Ltd and others v PC Box Srl, Case C-355/12, 19 September 2013
The Milan District Court requested a preliminary ruling from the ECJ in relation to proceedings brought by three companies in the Nintendo group for an injunction against the sale of devices which unlock the Nintendo games consoles so that third party games can be played on the console. Advocate General Sharpston has made certain recommendations in her opinion on questions referred to the ECJ by the Italian court in relation to the technological measures used to prevent the playing of third party games on Nintendo consoles, and the sale of the devices which circumvent such measures.
For the full text of the opinion, please click here.
