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

TRADE MARKS

August Storck KG v EUIPO, Case T-367/14

The EU General Court has partially annulled a decision of the Board of Appeal finding that use of a mark in connection with hard fruit candies is sufficient to support a claim of genuine use across the category of “confectionery” as a whole. The decision further demonstrates that use in a small part of the EU can be sufficient to constitute genuine use across the whole of the EU providing that such use is in accordance with the mark’s essential function, namely to guarantee the identity of the origin of the goods or services for which it is registered.

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

Universal Protein Supplements Corp v EUIPO, Case T-335/15

The European General Court, confirming the decision of the Fifth Board of Appeal of the EUIPO, has rejected an application to register a figurative sign representing a body-builder as an EU trade mark for three classes of goods and services. In dismissing the appeal, the General Court held that the mark applied for lacked any distinctive character and was descriptive, therefore falling into the prohibition contained in Article 7(1)(c) of European Regulation No. 207/2009. This prohibition aims to prevent marks from being registered where doing so would allow a descriptive sign to be monopolised by an economic operator.

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

COPYRIGHT

Ranks and Vasiļevičs, Case C-166/5

The European Court of Justice has held that although a lawful acquirer of a computer program is entitled to resell that copy due to exhaustion of the distribution right, the same does not apply to a back-up copy of the computer program. Even if the first acquirer’s original copy of the computer program has been damaged, destroyed or lost, he may not provide his back-up copy of the program to a new acquirer without the authorisation of the copyright holder.

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

Performing Rights Society Ltd and Phonographic Performance Ltd v CGK Trading Ltd and Others [2016] EWHC 2642 (Ch)

The High Court has found a nightclub manager liable for authorising and procuring infringing copyright in his premises, namely the playing of sound recordings at the club without the correct licences from the relevant collecting societies (the Claimants). The Court commented that being a Designated Premises Supervisor under the Licensing Act 2003 was not, in itself, sufficient to give rise to a liability for authorising or procuring infringement, however the Defendant was found liable for the infringing acts as the evidence put before the Court pointed to the fact that the Defendant carried out a managerial role at the club and her responsibilities included the authorising and procuring of music for the premises.

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

PASSING OFF

George East Housewares Ltd v Fackelmann GMBH & Co KG [2016] EWHC 2476

The Intellectual Property Enterprise Court has dismissed a claim for passing off brought by a company making and selling retro conical kitchen measuring cups under the brand name TALA in the UK. The Defendants made and sold similarly shaped measuring cups under altogether different brand names. The Court determined that the claimant did not hold any goodwill in the shape of the cups, pointing to the fact that the evidence did not suggest that consumers knew that these forms of cups had only ever been sold by the Claimants, or that they associated the shape with one single source. The Claimant had therefore failed to prove that it owned goodwill in the get-up as of the relevant date for a successful claim in passing off.

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