TRADE MARKS
Honda Motor Co Ltd v David Silver Spares Ltd, High Court, 28 July 2010
In a parallel trade case concerning spare parts for Honda motorbikes, the High Court rejected the defendant's application for the case against him for trade mark infringement to be struck out, or for summary judgment in his favour. Contrary to the defendant's arguments, Honda's case was not merely speculative, and it was for the defendant to shoulder the burden of proof concerning his defence of exhaustion of trade mark rights.
Court of Appeal Allows Euro-Defence Arguments in Parallel Trade Case
M-Tech, a dealer in second hand hardware, had bought in the USA
disk drives which were branded with Sun Microsystems' trade
mark and imported them into the UK for onward sale. Sun alleged
trade mark infringement on the grounds that it had not consented to
these products being sold on the EEA market and applied for summary
judgment, which was granted by the High Court.
The decision was appealed, and the Court of Appeal held that there
was a real prospect of establishing at trial that the Trade Marks
Directive had to be interpreted by reference to Articles 28 and 30
of the EC Treaty and that on M-Tech's case, a breach of Article
28 would be shown, which would affect Oracle's right to sue for
trade mark infringement. The Court commented that Oracle's
alleged practices arguably had more to do with restricting imports
with the object of preventing price competition within the EEA and
thereby protecting Oracle's profit margins, than with the
proper exercise of the right to control the first marketing its
products within the EEA. The Court also found that EU law
concerning of abuse of rights was developing and that the
application of the doctrine on facts, as alleged by M-Tech, could
not with certainty be excluded at this time. Lastly, the Court held
that there was an arguable point on the connection between trade
mark rights and competition law arguments. Therefore, the Court
found that the summary judgment should be set aside and the
defences argued in full at trial.
This is an unwelcome decision for all brand owners, and is
highly vulnerable to a reference to the ECJ.
For the full text of the decision, click here. For our
Law-Now on this decision, click
here.
EU General Court/ECJ Decisions on Likelihood of Confusion
The EU General Court has made two recent decisions upholding
decisions by the OHIM Board of Appeal in relation to the likelihood
of confusion between trade marks. These provide further
clarification on the meaning of "likelihood of
confusion". The ECJ also dismissed an appeal against a
decision by the EU General Court on the same issue, highlighting
its refusal to interfere with the General Court's findings of
fact, and its assessment of similarities between marks.
For the full text of the General Court decisions, click here and here. For a
full text of the ECJ's decision, click here.
Specsavers International Healthcare Limited v Asda Stores Limited [2010]
The High Court has held that the strapline "Be a real
spec saver at Asda", used by Asda to relaunch its optical
business, infringed some of Specsavers' Community trade marks
(CTMs) under Article 9(1)(c) of the CTM Regulation (40/94/EEC, now
replaced by 2009/207/EC), however, it rejected other infringement
claims and their claim for passing off.
For the full text of the decision, click here.
COPYRIGHT
Robin Meakin v BBC, Celador Productions and others
The defendants succeeded in obtaining summary judgment in their
favour to dismiss claims made by a litigant in person concerning
the alleged copying of formats for TV game shows.
For the full text of the decision, click here.
PATENTS
Occlutech GmbH v AGA Medical Corporation and another [2010]
AGA were unsuccessful in their attempt to have a declaration of
non-infringement of their patent EP(UK)0808138 by Mann J in the
Patents Court overturned in the Court of Appeal in respect of two
of Occlutech's products.
Patten LJ held that the rules of construction had been correctly
applied by Mann J and that the two Occlutech products were outside
the scope of protection provided by independent Claims 1 and 16 of
the patent.
To view 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 20/10/2010.