TRADE MARKS AND PASSING OFF

Combit Software GmbH v Commit Business Solutions Ltd, Case C-223/15

The CJEU has considered whether it would be appropriate for an EU trade mark court to grant a pan-European injunction in respect of the use of a sign where the court considers there to be a likelihood of confusion in some Member States but not others (due to language differences). The CJEU held that the essential function of the mark is not affected in those Member States where no likelihood of confusion arises and to prohibit legitimate trade in such Member States would go beyond the exclusive right conferred by the EU trade mark. Any injunction should therefore be granted for the entire EU with the exception of those parts where it has been found that there is no likelihood of confusion (i.e. excluding English-speaking Member States in this instance).

For a CMS Law Now on this case, please click here.

For the full text of the decision, please click here.

Trinity Healthcare Ag v EUIPO, Case T-453/15

The EU General Court has upheld a decision of the EU Board of Appeal in finding that the figurative EU trade mark “VOGUE” for goods in Class 3, was not descriptive and was not devoid of distinctive character. The relevant public would not discern cosmetic and beauty products as “fashion products” so as to create a concrete link in the mind of the average consumer as to an essential characteristic of such products. Further, the approach of filing numerous national trade mark registrations in Europe did not in and of itself constitute evidence that the EU trade mark application was made in bad faith.

For the full text of the decision, please click here.

Globo Comunicacao e Participacoes S/A v EUIPO, Case T-408/15
The EU General Court has rejected an application to register a sound mark as an EU trade mark on the grounds that it was devoid of distinctive character. The mark consisted of a repetition of a sound which was akin to a ringtone and was represented graphically. The Court considered that the mark would be identified by the relevant public as the ringing of an alarm or telephone and that there were no nuances which could make it distinctive and the mark would be perceived by the relevant public as a function of the goods and services covered and not as an indication of their commercial origin.

For the full text of the decision, please click here.

GENERAL

Process Components Ltd v Kason Kek-Gardner Ltd [2016] EWHC 2198 (Ch)
The High Court has ruled on the split of ownership of intellectual property (IP) rights assigned by a company in administration to two third party companies, ruling that the claimant had validly terminated the licence agreement with the defendant and that the defendant was estopped from denying that the claimant owned the relevant IP rights. In construing the agreement transferring the IP rights to the claimant as a whole, the court found that it did not operate to transfer all IP rights and rejected the claimant’s argument that a ‘common assumption’ principle should be adopted in assessing ownership. The court also concluded that a clause in the licence, which meant that it could not be shown to third parties, was either a condition of the contract or an innominate term allowing the claimant to terminate the licence immediately.

For the full text of the decision, please click here.