UK: IP Snapshot June 2011

Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2011] EWCA Civ 618, 24 May 2011

The Court of Appeal has reversed a judgment handed down by the High Court last year regarding the provisions governing unlawful threats of trade mark infringement proceedings in the UK. The Court considered that the trial judge had failed to consider the relevant letter as a whole and had focused too greatly on the final three paragraphs, such that the conclusion of the High Court that the letter qualified as without prejudice communication was erroneous. The case provides interesting guidance as to how a threat should be interpreted, and the extent to which a threat may benefit from "without prejudice" protection.

For our Law Now of the decision, click here

Longevity Health Products Inc v OHIM, General Court, 24 May 2011

The General Court has determined that a CTM application brought by Longevity Health Products Inc, for the word mark E-PLEX applied in respect of various goods in class 5 including pharmaceutical and veterinary preparations, should not be registered due to a likelihood of confusion with an earlier Portuguese registered trade mark for EPILEX for "anti-epileptics" in class 5.

For the full text of the decision, click here

Jean Christian Perfumes and another v Sanjay Thakrar, High Court, [2011] EWHC 1383 (Ch), 27 May 2011

The High Court has held that an oral licensee of a Community trade mark has locus to sue for infringement (in contrast to the position for UK trade marks, licences of which must be in writing) and that oral use of a Community trade mark can constitute infringement.

For the full text of the decision, click here

Group Lotus plc and another v 1Malaysia Racing Team SDN BHD and others [2011] EWHC 1366 (Ch), 27 May 2011

The High Court has determined that there was no trade mark infringement or passing off in respect of various claims and counterclaims related to the word Lotus used in the context of Formula 1 racing. The Claimants, Group Lotus Plc and Lotus Cars Ltd, the manufacturers of Lotus cars, brought various actions (including breach of contract) against a number of Defendants, all associated with the Team Lotus Formula 1 racing team.

Both parties were held to have separate goodwill in related fields – that of the manufacture and sale of sports cars, and the manufacture of racing cars. As such both parties were permitted to race in the F1 season as different teams; the court held that the nature of their respective businesses and the sophistication of the relevant consumer meant that there was no likelihood of confusion.

For the full text of the decision, click here

Omega SA v Omega Engineering Inc., Court of Appeal, [2011] EWCA Civ 645, 27 May 2011

The Court of Appeal upheld the High Court's order for summary judgment in favour of Omega US (engineering) against Omega Switzerland, the watchmakers, in relation to breach of contract concerning a trade mark co-existence agreement between the parties.

For the full text of the decision, click here

Dame Vivienne Westwood OBE v Anthony Edward Knight [2011] EWPCC 11, 11 May 2011

For a summary of this case, determined on 22 March 2011, please refer to our April 2011 IP Snapshot here. This hearing considered the reasons behind the costs assessment. It is of particular importance as it is the first time that the new costs capping provisions in the Patent Country Court have been applied to nearly the whole of a case.

Judge Birss noted that limits are set on costs in order to provide certainty for litigants, so they are able to envision their exposure to costs in seeking to defend their IP rights; he confirmed that the applicable stages and scales for a trial on liability is at Section 25C of the Costs Practice Direction, in Table A, found at CPR 45.

For the full text of the decision, click here

PASSING OFF

Redwood Tree Services Limited v Warren Apsey T/A Redwood Tree Surgeons [2011] EWPCC 014

Redwood Tree Services Ltd, the claimant, succeeded in a passing off action against a business trading under the name "Redwood Tree Surgeons". Both parties were small local tree-surgery businesses, based about ten miles apart. The judge held that the claimant's tree-surgery business had a small goodwill, highly localised in the GU, SL and KT postcodes. Judge Birss held that there was the requisite misrepresentation when the defendant traded in the claimant's area, although most of the time he did not, and that this was the kind of case in which damage followed if misrepresentation was established. Consequently, a claim for passing off had been made out. Judge Birss considered that he could not stop the defendant trading under the name "Redwood Tree Surgeons" within the RG postcode area. The only injunction which would be appropriate was one specifically limited to the GU, SL and KT postcodes. This case demonstrates that passing off can be found between small businesses operating in a highly localised area.

For the full text of the decision, click here

COPYRIGHT

CSC Media Group Limited v Video Performance Limited [2011] EWCA Civ 650, 27 May 2011

The Court of Appeal has upheld a decision of the Copyright Tribunal in relation to the royalty rate to be used in a licence for music videos. This judgment overturns a previous decision of Floyd J. CSC Media Group Limited ("CSC"), a broadcaster of seven television music channels, was licensed by Video Performance Limited ("VPL") to broadcast and show certain music videos in public. The terms of the licence (agreed in 2002) provided for the payment to VPL of a pro-rated fee based on the headline rate of 20% of gross revenue. This licence was never signed. The Tribunal rejected this licence as a useful comparator and only considered a licence between VPL and BSkyB agreed in 2004 (the "BSkyB Licence"). The Tribunal decided that the reasonable royalty rate should be 12.5% of CSC's gross revenue subject to certain proposed deductions (for instance advertising). The Court of Appeal upheld this decision to look at the most relevant comparable (in this case the BSkyB Licence) and adjust the royalty rate accordingly.

For the full text of the decision, click here

PATENTS

Musion Systems Ltd v Activ8 -3d Ltd and others [2011] EWPCC 12, 18 May 2011

The Patents County Court, in a preliminary issue on the involvement of certain defendants in the pleaded infringing acts, has considered whether particular company e-mail addresses used in correspondence relating to the alleged infringement could be evidence as to establishing the role in which individual defendants played in the relevant activities and any joint tortfeasor liability. The court held that whether the individuals used a particular e-mail address was a matter which could not bear a great deal of weight but which it would be wrong to ignore.

For the full text of the decision, click here

DESIGNS

Advocate General's Opinion on Case C-281/10 P PepsiCo, Inc., 12 May 2011

Advocate General Mengozzi delivered his opinion on 12 May 2011 in the long-deliberated Case C-281/10 P Pepsico, Inc. The opinion considers designers' degree of freedom in designing goods and provides clarity on the meaning of the "overall impression" made by a design, as set out in Regulation No 6/2002. The Advocate General goes on to define the notional informed user of designs, declaring that it is neither a general consumer nor an expert with specific technical expertise, but someone who sits between the two. The Advocate General also considered the informed user's method of comparing goods, noting that direct comparisons are suitable in some cases. If the European Court of Justice (ECJ) chooses to follow the Advocate General's opinion, owners of designs will have a better understanding of the strength of their design rights thanks to these definitions.

For our Law Now of the decision, click here

Albert Packaging Ltd and others v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, 2 June 2011

This was an action for infringement of unregistered design right (UDR). The Patents County Court found that UDR subsisted in the Claimant's sandwich wrap carton in the assembled form, but not in the two other more generalised ways in which they had defined their design. However, it was found that the Defendant's product did not infringe the UDR. This case demonstrates that two designs can have a number of similarities without there being infringement.

For the full text of the decision, click here

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 24/06/2011.

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