Bringing you regular news of key developments in intellectual property law.

TRADE MARKS AND PASSING OFF 

The London Taxi Corporation Ltd v Frazer-Nash Research Ltd and another, [2016] EWHC 52 (Ch), 20 January 2016

The High Court has held that a UK and a Community Trade Mark for the shape of London taxis, were invalid on the grounds that they lacked distinctive character (both inherent and acquired), and because they consisted exclusively of the shape which gave substantial value to the goods. This case highlights the inherent difficulties in registering trade marks for three-dimensional shape marks. 

The court held that the average consumer would perceive both of the Trade Marks as mere variations of the typical shape of a taxi or car. Further, the shape would not be deemed as identifying the origin of the goods and so lacked inherent distinctive character. On the issue of acquired distinctiveness, there was no evidence that taxi drivers (being the average consumer) perceived the taxis embodying the shape Trade Marks as emanating from the Claimants because of their shapes as opposed to the conventional trade marks by reference to which the vehicles are sold. 

The Trade Marks were also held to be invalid because they consisted exclusively of the shape which gave substantial value to the goods. The judge relied on a number of factors in reaching this decision, but particularly significant was that the UK shape was also protected by a UK registered design, and the purpose of this provision under trade mark law is to prevent trade mark rights being used to prolong indefinitely the legal protection which would be limited by another intellectual property right. 

For the full text of the decision, please click here

The Royal County of Berkshire Polo Club Ltd v OHIM (Order of the Court) [2016] EUECJ C-278/15 P, 14 January 2016

The CJEU has dismissed an appeal by the Royal County of Berkshire Polo Club for a polo-player figurative Community trade mark to set aside the EU General Court's decision to uphold an opposition by the owner of earlier polo-player figurative CTMs which included the text “BEVERLEY HILLS POLO CLUB”. 

The CJEU dismissed two grounds of appeal on the basis that the applicant’s arguments were put forward in a general manner and were therefore inadmissible and unfounded. Another of the applicant's grounds was that the General Court should have considered the different geographical indications in the marks in more detail. The CJEU found that this was factual in nature and therefore inadmissible.  The CJEU also held that the General Court had not failed in its duty to state the reasons for concluding that the OHIM Board of Appeal had erred in finding that there was a likelihood of confusion between the marks in relation to the goods "whips, harness, and saddlery" but none of the other goods in Class 18. It concluded that the General Court had provided reasoning to the requisite legal standard.

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

CTM OPPOSITIONS

Laboratorios Ern v OHIM, Case T-802/14, 21 January 2016

The EU General Court dismissed Laboratorios Ern’s argument that the proposed application for ‘Lenah.C’ was confusingly similar to their ‘LEMA’ trademark. The Court found there was some phonetic similarity but no visual or conceptual similarity. When considering the mark ‘Lenah.C’, the court held that the relevant public will tend to perceive the sign ‘Lenah.C’ as a whole. They are not very likely to view the sign as two parts, ‘lenah’ and ‘c’. Overall the trademarks were not confusingly similar and the mark was maintained.  For the full text of the decision, please click here.

The Cookware Company Ltd v OHIM, Case T 535/14, 14 January 2016

The EU General Court rejected the appeal to annul the decision of the Board of Appeal. They held that the “VITAVIT” and “Vita+verde” marks cover identical goods and that there was a likelihood of confusion on the basis of there being a certain degree of phonetic and visual similarities and a high degree of conceptual similarity. The signs were found to be conceptually similar for the part of the relevant public who would understand the word element ‘vita’ as a reference to the concept of “life” and or vitality.  For the full text of the decision, please click here

LR Health & Beauty Systems v OHIM, Case T-202/14, 26 January 2016

The EU General Court upheld the likelihood of confusion between NOVA and figurative "LR nova pure" trade marks registered for toiletries in Class 3. There was held to be a medium degree of visual similarity and an average degree of phonetic similarity. The word ‘nova’ may be understood by part of the public as a reference to the adjective ‘new’, unlike the word ‘pure’, which is not commonly used in Poland. This idea of ‘newness’ is also present in the earlier mark and so there was found to be a medium degree of conceptual similarity. As a result, the court held there was a likelihood of confusion, and the mark was rejected. 

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