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.