PATENTS

Future New Developments Ltd v B&S Patente und Marken GmbH
 [2014] EWHC 1874 (IPEC), 9 June 2014

The UK IPO referred a claim to the IPEC on 23 October 2013, directing that it would be more properly dealt with by the court. In the proceedings, the defendant, applied for a declaration by the IPEC that it had no jurisdiction to hear the dispute and that the claim form be set aside. One argument advanced was that Article 24 of the Brussels I Regulation applied, which raised the issue of whether the UK IPO is a “court” within the meaning of Article 24. It was held that the only possible explanation for the defendant’s conduct was that they intended to have the case tried in England. The UK IPO was a “court” under Article 24 and accordingly the IPEC had jurisdiction to hear the dispute.

For the full text of the decision, please click here
 

TRADE MARKS AND PASSING OFF

Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch), 16 June 2014


The High Court found that Total Limited's registered trade mark for YOUR VIEW was infringed by the use of the mark “YouView” in relation to television set-top boxes and related services.  The court rejected YouView’s counterclaim for invalidity, finding that Total Limited’s mark was sufficiently distinctive and that its specification did not lack clarity according to the principles of the IP Translator case decided by the CJEU. This decision follows a previous Trade Marks Registry case in which Total Limited was partially successful in opposing YouView’s trade mark application.

For the full text of the decision, please click here

Bimbo SA v OHIM, Case C-591/12 P, 8 May 2014

The CJEU upheld the decision of the General Court that there is a likelihood of confusion between the composite mark ‘BIMBO DOUGHNUTS’ and ‘DOGHNUTS’. The CJEU stated that the average consumer usually perceives a trade mark as a whole, and it is only in particular cases where it is possible that a component of a composite mark may retain an independent distinctive role in the composite sign concerned. The General Court had correctly applied the law and the appeal was dismissed.

For the full text of the decision, please click here

Coty Germany GmbH v First Note Perfumes NV, Case C-360/12, 5 June 2014

The CJEU has held that a German court did not have jurisdiction to hear a claim for trade mark infringement where the original seller of the counterfeit goods had not acted in Germany. The relevant Member State was that in which the defendant had committed the alleged unlawful act.  In relation to the unfair competition claim, the CJEU held that the special jurisdictional rule in Article 5(3) of Regulation 44/2001 should be interpreted restrictively.  The defendant must have acted within a Member State in order for jurisdiction to be established in that Member State on the basis of “the place of the event giving rise to the damage”.  As regards “the place where the damage occurred or may occur”, jurisdiction could be established in a Member State where the defendant had not acted, only if the unlawful act infringed national law of the court seized, and caused or may cause damage within that jurisdiction.

For the full text of the decision, please click here

Oberbank Ag, Banco Santander SA and Santander Consumer Bank AG v Deutscher Sparkassen- und Giroverband eV, joined cases C-217/13 and C-218/13, 19 June 2014

The CJEU has provided further guidance on the test of acquired distinctiveness, where  distinctiveness has been acquired through use under Article 3(3) of the Trade Mark Directive. In particular, the case establishes that acquired distinctiveness cannot be determined by reference to a pre-determined percentage in a consumer survey. Furthermore, the proprietor bears the burden of proving that the mark applied for has acquired distinctiveness by the date on which the mark is applied for.

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

Basic AG Lebensmittelhandel v OHIM, Case T‑372/11, 26 June 2014

The General Court dismissed the claimant’s appeal against the First Board of Appeal’s decision, and held that there is a likelihood of confusion on the part of the relevant public.  The court found that the services covered by two marks are similar, the marks are visually similar to a low degree, phonetically and conceptually identical and the distinctive character of the earlier mark is low. 

For the full text of the decision, please click here

Orvec International Ltd v Linfoots Ltd [2014] EWHC 1970 (IPEC), 18 June 2014

Orvec brought an action against Linfoots, claiming that by providing Orvec’s competitor, Intex, with photographs taken under an advertising agreement between Orvec and Linfoots, Linfoots was in breach of an implied term of their advertising agreement and was also instrumental in Intex passing itself off as the manufacturer of Orvec’s products. The case was heard by Judge Hacon in the IPEC and both claims failed, primarily due to the lack of evidence provided by Orvec. Judge Hacon applied a simple and minimalist approach to the alleged implied term, and was only willing to imply a non-exclusive copyright licence to Orvec to use the photographs.

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

1872 Holdings vof v OHIM, Case T-207/13, 24 June 2014
The EU General Court has upheld a decision made by the OHIM Board of Appeal that the word mark THE SPIRIT OF CUBA should be invalid, in an appeal against the mark’s invalidity brought by 1872 Holdings. The mark was registered by 1872 Holdings for alcoholic beverages and related services.  It was held that the word mark indicated a characteristic of the goods or services, contrary to Article 7(1)(c) of the Community Trade Mark Regulation (207/2009/EC) (the “Regulation”). The court dismissed the applicant’s argument that "spirit of Cuba" would be understood by the relevant public to refer to the soul or essence of Cuba. Instead, the court agreed with OHIM that the mark would be considered a reference to an alcoholic distilled spirit. The mark was held to be descriptive of the goods and services in question and was therefore invalid under Article 52(1)(a) of the Regulation.

For the full text of the decision, please click here

DESIGNS

Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, Case C-345/13, 19 June 2014 

Karen Millen Fashions Ltd (“KMF”) commenced proceedings against Dunnes in the Irish High Court in January 2007 for infringement of unregistered Community designs of specific “KMF Garments”. Dunnes accepted that it copied the designs, but disputed that KMF was the holder of the unregistered Community designs for the KMF Garments because they did not have individual character. Questions were referred to the CJEU. The CJEU confirmed that for a design to have individual character, the overall impression it produces on the informed user must be different from that produced by one or more earlier designs taken individually, rather than from elements of a number of earlier designs combined to make a fictional whole. In relation to the burden of proof, the CJEU held that the holder of an unregistered Community design is not required to prove that it has individual character; it need only indicate the elements of the design that give it individual character.

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