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


Martin Blomqvist v Rolex SA and another, Case C 98/13, 6 February 2014

In a positive move for rights holders, the Court of Justice of the European Union has clarified that the sale of counterfeit goods from non-EU websites can amount to copyright or trade mark infringement for the purposes of the Customs Regulation when such goods are imported by consumers into the EU.  The CJEU has confirmed that there is no requirement for counterfeit goods to be the subject of an offer for sale or an advertisement targeted at consumers in the European Union in order for copyright or trade mark infringement to occur, and such goods may be seized at the border by customs officials.

For the full text of the decision, please click here

Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2014] EWHC 185 (Ch), 7 February 2014

The recent trade mark infringement case between Twentieth Century Fox and Comic Enterprises over a composite mark including the words “The Glee Club” is no laughing matter. The High Court considered the concept of “wrong way round” confusion: whether evidence that demonstrated that members of the public had wrongly linked the Claimant’s venues trading as “The Glee Club” to the Defendant’s TV show “Glee” was sufficient to establish infringement of the Claimant’s mark. More typically, a Claimant will present evidence that the Defendant’s goods or services have been confused with the Claimant’s goods or services. The judge held that any confusion will suffice, whether that is the “wrong way round” or the “right way round”.

The judgment also considers the thorny issue of dilution following the Intelmark decision, in particular how the courts will assess the evidential requirement of demonstrating a "change in the economic behaviour" of the relevant consumer.

For the full text of the decision, please click here

Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch)

The High Court has held that House of Fraser’s use of a logo featuring a pigeon wearing a top hat and bow tie infringed Jack Wills’ UK and Community trade marks in respect of its “Mr Wills” logo, a pheasant wearing a top hat and holding a cane.  The Court held that there was a likelihood of confusion between the logos on the part of the average consumer.  This was due to a number of factors, in particular the conceptual similarity of the logo.  Although the Court acknowledged that other clothing brands also use an image of a bird as their logo, a key factor in its decision was that no other brand used a bird wearing human accessories.

For the full text of the decision, please click here

Leidseplein Beheer BV, Hendrikus de Vries v Red Bull GmbH, Red Bull Nederland BV, Case C-65/12Summary

The CJEU has clarified the concept of “use of a mark without due cause”, as used in, among others, in Article 5(2) of the Trade Marks Directive. The question was whether there can be “due cause” for use of a trade mark where the sign that is identical or similar to the trade mark with a reputation was already being used in good faith by the third party concerned before that trade mark was filed. The CJEU held that this can be taken into account but it also must be shown that the use of that sign in relation to the identical product is in good faith. To determine whether the use is in “good faith”, the national court must take into account, in particular: (1) how that sign has been accepted by, and what its reputation is with, the relevant public; (2) the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and (3) the economic and commercial significance of the use for that product of the sign which is similar to that mark.

For the full text of the decision, please click here

Hearst Holdings Inc and another v A.V.E.L.A. Inc and others [2014] EWHC 439 (Ch), 25 February 2014

The claimant succeeded in a trade mark infringement and passing off action to protect the “Betty Boop” character from unauthorised merchandising by the defendants and its licensees.  The outcome is not surprising as the claimant was well protected by registered trade marks and had longstanding goodwill in the UK covering its merchandising activities.  This case may be contrasted with other cases concerning merchandising focussed on real individuals, as opposed to fictional characters, some of which have found that certain items bearing registered marks (eg. posters of pop groups) may not in fact be indicators of origin.

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


H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH, C 479/12

The CJEU has provided further guidance on the meaning of “circles specialised in the sector concerned” for the purposes of Articles 7(1) and 11(2) of the Community Designs Regulation. In particular, it establishes that a disclosure to traders is sufficient to give rise to an unregistered Community design right and, furthermore, that a disclosure outside of the EU may be sufficient to invalidate a Community design.

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

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181

The Court of Appeal overturned a High Court decision which held that PMS’s Kiddee Case ride-on suitcase infringed Magmatic’s Community registered design for the Trunki suitcase. The court found that Arnold J had erred in considering that the scope of the CRD was for the shape of the suitcase only. He should have also taken into consideration the surface decoration on the design and the colour contrast between the wheels and the strap, and the rest of the suitcase. As a result, his errors as to the proper characterisation of the CRD had been carried through into his global comparison between the CRD and the Kiddee Case. Considering the merits of the claim, the CoA found that the overall impression created by the two designs was very different. Whilst the CRD created the impression of a horned animal, PMS’s design was softer, more rounded and more akin to an insect with antennae or an animal with floppy ears.

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


Svensson and others v Retriever Sverige AB, Case C 466/12, 13 February 2014

To relief in the media industry, the ECJ has held that, where internet content is generally available to the public, the mere provision of web links to such content does not generally infringe the copyright in the content.  Moreover, this is even the case where it is not clear to the person clicking the link that they have been taken to a web page outside the website of the person providing the link.  This is because, as the content is generally available to the public, the provision of the links does not constitute a communication to a new public.

However, the CJEU also said that if the links provided access to content that was not generally available to the public, for example by circumventing security measures applying to the original web pages where the content was published or where the content had been removed from those original web pages, the links could constitute communication to a new public.

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

Ochranný svaz autorský pro práva k dílům hudebním, o.s. v Léčebné lázně Mariánské Lázně a. s., Case C-351/12, 27 February 2014

Following a referral from the Plzeň Regional Court in the Czech Republic the CJEU has ruled that the transmission of copyright works though TVs and radios in guest rooms at a commercially run spa constitutes  a “communication to the public” within the meaning of the Copyright Directive. The court was also asked to rule on the legitimacy of monopolistic collecting societies in Member States, in relation to which it held that although such a territorial monopoly does constitute a restriction on the freedom to provide services, the restriction can be justified on the basis that it is appropriate and necessary for attaining the objective of the effective management of intellectual property rights.

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