TRADE MARKS AND PASSING OFF

Netto Marken Discount v Deutsches Patent-und Markenamt, Case C-420/13, 10 July 2014

The ECJ has ruled that a trade mark can be registered for a service bringing together services.  In this case, a price comparison website applied to register a trade mark under class 35 in Germany.  Although there is no guidance as to the meaning of “services” in the Directive, the ECJ held that a service bringing together services does fall within the meaning of “services” under Article 2 of the Trade Marks Directive.  The ECJ also held that a description of such services on an application to register a trade mark should be sufficiently clear and precise so as to allow the IP authorities and other economic undertakings to know which services the applicant intends to bring together.  This is so that the authorities are able to fulfil their obligations in relation to prior examination and so that potential competitors can obtain relevant information about the rights of third parties before registering any new marks.

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

Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch), 31 July 2014

The High Court recently held that Victoria’s Secret’s underwear and casual clothing product line sold under the brand ‘PINK’ infringed the Community Trade Mark and UK Trade Marks owned by the luxury shirt maker, Thomas Pink. Mr Justice Birss held that there was a likelihood of confusion between Thomas Pink’s Trade Marks and Victoria’s Secret’s use of ‘PINK’ on storefronts and when emblazoned on clothing. Furthermore, the use of ‘PINK’ by Victoria Secret was likely to cause detriment to the well-established reputation of Thomas Pink.

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

Apple Inc. v Deutsches Patent- und Markenamt, Case C 421/13, 10 July 2014

The CJEU has confirmed that a representation of a store layout is capable of being registered as a trade mark.  In response to a referral from the German Bundespatentgericht, the CJEU held that a design setting out the layout of a store constituted a sign capable of registration as a trade mark, provided it was capable of distinguishing the goods or services of one undertaking from those of another.  In order to assess whether a layout is capable of distinguishing the goods and services, it is relevant to take into account whether it departs significantly from the norms or customs of the relevant sector.

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

Enterprise Holdings Inc v Europcar Group UK Ltd and another [2014] EWHC 2498 (Ch), 22 July 2014

In a trade mark infringement and passing off action the claimant successfully applied for permission to adduce survey evidence to demonstrate distinctiveness of its marks. The Court considered the previous judgments in Interflora v Marks & Spencer and found that the requirements set out there were met. In particular here, the defendant had spent more on resisting this application than its estimated costs of responding to the survey evidence at trial, so the cost would be justified. The Court also added a requirement to the test to be applied that the survey would be likely to be held valid at trial.

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

COPYRIGHT

Bristol Groundschool Ltd v Intelligent Data Capture Ltd and others [2014] EWHC 2145 (Ch), 2 July 2014 

The case concerned a lengthy and complicated claim for copyright infringement and breach of contract in respect of materials produced for use in training materials for pilots. The Court held that, on a true construction of the agreement between the parties, Bristol Groundschool Ltd owned most of the copyrights in artwork included in the electronic training materials and that the defendants had infringed those copyrights by reproducing the artwork for their own business purposes. Nonetheless, the court did find in favour of Intelligent Data Capture Ltd in respect of some works which were withdrawn from Bristol Groundschool Ltd when the relationship between the parties broke down. Intelligent Data Capture was further held liable for breach of contract for failing to provide technical support to Bristol Groundschool’s customers.

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