TRADE MARKS AND PASSING OFF

National Guild of Removers and Storers Ltd v Milner (t/a Intransit Removals and Storage) and others [2014] EWHC 670 (IPEC), 18 March 2014

The Intellectual Property Enterprise Court has dismissed a claim that certain trade marks were invalidly registered on the ground of bad faith, which was based on the argument that the applicant had, at the time of filing, intended to use the marks as collective marks.  The marks were registered by the National Guild of Removers and Storers (“NGRS”) for use by its members.  The Court’s decision was that, although the marks did not identify the goods or services of one trader from those of another in the sense that a number of companies were entitled to use the mark (i.e. all members of NGRS), the marks could still function to show that the goods and services were from a source which was licensed by a single entity.  Although this interpretation serves to limit the effect of a substantial proportion of the legislation governing collective marks, the Court held that the way in which a trade mark is used in the modern commercial world has changed, and that the interpretation of the legislation should reflect this.

For the full text of the decision, please click here

Yoshida Metal Industry Co. v Pi-Design AG and others, Joined Cases C‑337/12 P to C‑340/12 P

The CJEU has ruled on the elements that should be taken into account when analysis of the technical function of a trade mark is being carried out. It was held that, following Lego Juris v OHIM Case 48/09 P, the identification of the essential characteristics of a mark may (depending on the case and the degree of complexity of the sign) be carried out by means of a simple visual analysis or “a detailed examination in which material relevant to the assessment is taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned.” In this case it was found that the trade mark owner’s earlier patents could be relevant.

For the full text of the decision, please click here.
 
Backaldrin Osterreich The Kornspitz Company v Pfahnl Backmittel GmbH, Case C-409-12, 6 March 2014

The CJEU has provided further guidance on the circumstances in which a mark will be revoked for being the common name in the trade for the goods and services for which it is registered. In particular, where a trade mark proprietor’s goods are being sold to end users via an intermediary, such trade mark proprietor should monitor the intermediary’s activities to ensure that they are marketing the goods in a manner that maintains the trade mark proprietor’s rights rather than encouraging generic usage.

For the full text of the decision, please click here.
 
Deutsche Bank AG v OHIM, Case T‑291/12, 25 March 2014

The General Court of the European Union has upheld the decision of the OHIM Board of Appeal to reject Deutsche Bank’s application to register the advertising slogan ‘Passion to Perform’ as a trade mark. The General Court held that the mark was incapable of distinguishing the commercial origin of the services as required under Article 7(1)(b) of Council Regulation (EC) No 207/2009, as it would only be perceived by the public as a laudatory statement and it lacked originality.

For the full text of the decision, please click here.
 
Oracle America, Inc. v OHIM, Case T-554/12, 27 March 2014

The General Court dismissed an appeal by Oracle against the Board of Appeal’s rejection of an opposition against the mark AAVA MOBILE based on Oracle’s prior registration for JAVA. The two signs were visually, phonetically and conceptually dissimilar.

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

CONFIDENTIAL INFORMATION


Wade and others v British Sky Broadcasting Ltd [2014] EWHC 634 (Ch), 11 March 2014

The High Court dismissed a claim for misuse of confidential information pertaining to a PowerPoint presentation setting out an idea for a new TV music talent show called The Real Deal. The defendant, British Sky Broadcasting Ltd (“Sky”), had produced a show called Must be the Music which bore similarities with The Real Deal soon after informing the claimants that it had decided not to commission their idea. The judge said that although the individual elements of The Real Deal did not on their own have the necessary quality of confidence to make them protectable, it was possible that they might do so in combination. Nevertheless, he did not explore this point any further as he found that, on the evidence submitted, Sky had not copied the claimants' ideas in order to create its own show, but had developed it independently.  He further held that there were many differences between the two shows and it would not be possible to “cherry pick” elements in order to sue for misuse of confidential information.

For the full text of the decision, please click here