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


Leno Merken BV v Hagelkruis Beheer BV, Case C 149/11, 5 July 2012

Following a reference for a preliminary ruling from the Gerechtshof’s-Gravenhage (Regional Court of Appeal, The Hague, Netherlands), the Advocate General has given her opinion on the extent to which a Community trade mark must be used in member states in order for the mark to have been put to “genuine use”. The Advocate General considered that use in only one member state might constitute genuine use, but such use should be assessed by taking ‘all relevant facts’ into account. Genuine use is use that is sufficient to maintain or create market share in that market for the goods and services covered by the mark, taking into account the particular characteristics of the relevant market.

For the full text of the decision, click here.

Red Bull GmbH v Sun Mark Ltd and another [2012] EWHC 1929 (Ch), 17 July 2012

Red Bull GmbH successfully claimed in the High Court that a manufacturer and importer’s use of the mark “BULLET” and the strap line “NO BULL IN THIS CAN” in respect of energy drinks infringed two of Red Bull’s international trade mark registrations for “BULLIT” under section 10(2) of the Trade Marks Act 1994, and also its Community trade mark registration for “RED BULL” under Article 9(1)(c) of the Community Trade Mark Regulation 207/2009/EC. The defendants were unsuccessful in their counterclaim that Red Bull had registered the BULLIT marks in bad faith and had no intention of using the marks.

For the full text of the decision, click here

Interflora Inc & Anor v Marks and Spencer Plc & Anor [2012] EWHC 1722 (Ch), 20 June 2012

The High Court has held that Interflora can adduce witness evidence derived from a pilot survey which it conducted. Although the survey itself was inadmissible, being considered unreliable and the questions flawed, the evidence obtained could be probative. Some questions were not so flawed as to taint any further evidence that might be obtained from individual witnesses, but others were considered misleading. While Interflora has been granted permission to adduce evidence based on one of the pilot surveys in this trade mark infringement dispute, it remains open to Marks and Spencer to challenge the probative value of that evidence at trial.

For the full text of the decision, click here.

Fine & Country Ltd and others v Okotoks Ltd and others [2012] EWHC 2230 (Ch), 31 July 2012

The High Court has ruled that Okotoks’s use of the word “Fine” for provision of estate agency services constituted passing off and infringement of Fine & Country’s “Fine & Country” trade marks. Although Okotoks argued that, as a licensee of Fine & Country, it had accrued goodwill in the name and logo, the court found that the goodwill had (at least in substantial part) been generated by Fine & Country’s brand and services and therefore accrued to them. 

For the full text of the decision, click here.


UsedSoft GmbH v Oracle International Corp, Case C-128/11, 3 July 2012

The CJEU considered the extent to which exhaustion of rights could apply to software sold by way of download from the internet and to “second hand” user licences. It found that Article 4(2) of Directive 2009/24/EC must be interpreted as meaning that the right to distribute a copy of a computer program is exhausted if the rightholder, who allowed that copy to be downloaded from the internet to a data carrier, also granted, for consideration, a right to use that copy for an unlimited period of time. Exhaustion did not depend on whether there was a physical hard copy product. Further, in the event of resale of such a user licence, the second and subsequent acquirers of the licence will be able to rely on exhaustion of the distribution right and be regarded as lawful acquirers within Article 5(1). However, licences acquired by the first acquirer could not be divided and resold in different numbers. Also, a first acquirer who resells must make his own copy unusable at the time of its resale. 

For the full text of the decision, click here.


Solvay SA v Honeywell Fluorine Products Europe BV and others, Case C-616/10, 12 July 2012

The CJEU has ruled that national courts are not precluded from granting interim relief in patent disputes where exclusive jurisdiction has been granted to a court of another member state pursuant to the EU Jurisdiction Regulation. Although Article 22(4) of that Regulation provides for exclusive jurisdiction over patent registration and validity to the courts of the country where a patent is registered or applied for, the courts of another member state may still grant interim relief under Article 31.

For the full text of the decision, click here.


Samsung Electronics (UK) Ltd v Apple Inc. [2012] EWHC 1882 (Pat), 9 July 2012

The High Court has held that, under Council Regulation (EC) No 6/2002, Samsung's Galaxy tablet computers did not infringe Apple's Community Registered Design. The similarities and differences between the products were considered, followed by an assessment of the seven features relied upon by Apple against the degree of freedom of the designer and the design corpus that existed in 2004. The court found that the informed user’s overall impression of the Samsung tablets was that their front view indicated that the products belonged to the same pre-existing family as Apple’s design, but that Samsung’s tablet computers did not have the same understated and extreme simplicity: they were not as “cool”. As the overall impression produced on the informed user was different, there was no finding of infringement by Samsung.

For the full text of the decision, click here

Samsung Electronics (UK) Ltd v Apple Inc [22] EWHC 2049 (Pat), 18 July 2012

Following the finding set out above that Samsung’s Galaxy tablet computers did not infringe Apple’s Community Registered Design, Apple continued to make allegations that Samsung were copying Apple’s designs. Samsung applied to the court to request that Apple be restrained from making these allegations and to require Apple to publish the High Court judgment on its websites and in various national newspapers. The High Court refused to grant an injunction to restrain Apple from making such statements as this would restrict their right to freedom of speech. However, the High Court considered that Samsung continued to suffer harm from such statements and so ordered the dissemination of its judgment in the newspapers and on Apple’s UK website only.

For the full text of the decision, click here.

Gimex International Groupe Import Export v The Chill Bag Company Ltd and others [2012] EWPCC 31, 20 July 2012

HHJ Birss has decided in favour of a registered Community design holder, finding that its design for an ice bag was valid and had been infringed by a competitor product. In doing so, HHJ Birss has clarified that prior art can come from any sector; a product could not be excluded as prior art just because the design was for a product used for a different purpose from the product that was the subject of the registration. Nonetheless, the use to which a product is put is of relevance in that it plays a part in the characterisation of the informed user. It does not however constrain the citable prior art against a registered design.

For the full text of the decision, click here.

Bayerische Motoren Werke Aktiengesellschaft v Round and Metal Ltd and another [2012] EWHC 2099 (Pat), 27 July 2012

The High Court held that the defendant’s replica alloy wheels infringed BMW’s Community registered designs. The defendant was unable to rely on the defence to infringement under Article 110(1) of Council Regulation (EC) No 6/2002, which excludes component parts of a complex product from protection when used for the purpose of repairing a complex product to restore its original appearance. The High Court clarified the scope of this exception, finding that it is for a defendant to prove that this exception applies and not for a claimant to prove that their design is protected. Significantly, the provision only applies if the design of the component part is dependent on the appearance of the complex product. In this case the design of wheels was not dependent on the appearance of the car, as a variety of wheels could be chosen for any model.

For the full text of the decision, click here.


Phillips v Mulcaire [2012] UKSC 28, 4 July 2012

The Supreme Court has dismissed an appeal by Glenn Mulcaire against a decision requiring him to provide disclosure in connection with intercepted phone messages. The court ruled that Mulcaire, a private investigator in two telephone-tapping cases, could not rely on privilege against self-incrimination due to the derogation for “technical or commercial information” in section 72 of the Senior Courts Act 1981. As an obiter point, it was found that confidential information relating to an individual’s private life could not constitute ‘other intellectual property’ under that section. Its legislative purpose was to prevent remedies against commercial piracy from being frustrated by the privilege against self-incrimination.

For the full text of the decision, click here.