European Union: IP Snapshot: August 2011

TRADE MARKS

Martin Steven Lewis v Client Collection Limited [2011] EWHC 1627 (Ch), 6 July 2011

Martin Lewis, the founder and operator of the website moneysavingexpert.com, has been awarded summary judgment in a claim where he alleged that the defendant, Client Collection Limited ("CCL"), who ran a telephone-based claims management service operating under the name of "Money Claiming Experts", was infringing his UK registered trade marks for "Money Saving Expert" under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994.

Interestingly, the Judge granted the application for summary judgment under section 10(2), holding that the defendant had no reasonable prospect of successfully defending the claim. This appears to be due to the reputation of the mark in the UK via the website moneysavingexpert.com. It was also significant that the defendant did not submit any positive evidence of its own but only sought to weaken the evidence adduced by the applicant.

For the full text of the decision, click here.

L'Oréal SA and others v eBay International AG and others, Case C-324/09, 12 July 2011

This is the eagerly awaited judgment from the Court of Justice of the European Union on the extent to which the operator of an online marketplace is required to provide assistance or bear responsibility (including potential liability) in relation to counterfeit goods or parallel imports that infringe trade marks offered on their online platforms. The Court reminded trade mark proprietors that they may only rely on their rights in the context of commercial activity. In regard to parallel imports, it was confirmed that EU trade mark laws apply to offers for sale relating to trade marked goods located in non-EU/EEA states if those offers for sale are targeted at consumers in the EU.

Importantly, the Court also confirmed that if a seller uploads an offer for sale that contains signs similar or identical to a registered trade mark, amounting to trade mark infringement, the marketplace operator may escape liability through the e-commerce directive "hosting" exemption, except where it has provided the seller with "active" assistance, or was aware of factors or circumstances to make the offer for sale in question unlawful, and, upon becoming aware, failed to remove or prevent access to the offer. This is probably the most problematic part of the judgment for marketplace operators. However, the extent to which online marketplace providers will in fact be burdened by this judgment will not become clear until national courts begin to apply it to the disputes that come before them.

For our Law Now of the decision, click here.

Samuel Smith Old Brewery (Tadcaster) v Philip Lee (trading as "Cropton Brewery") [2011] EWHC 1879 (Ch), 22 July 2011

Samuel Smith claimed that Cropton Brewery had infringed its trade mark of a white rose device on two of its labels for beers and alleged passing off. Both are small independent breweries based in Yorkshire, hence the use of the white rose symbol. It was held that Cropton had infringed the trade mark on one of its beers, Yorkshire Warrior, but only since October 2009. Cropton's white rose, symbolising Yorkshire, was held to be an indication concerning the geographical origin of the goods, and accordingly could benefit from the defence at Section 11(2)(b) of the Trade Marks Act 1994. However, from October 2009, Cropton's use of the trade mark ceased to be in accordance with honest practices, as they knew at that point that a licence from the Ministry of Defence to reproduce the white rose symbol of the Yorkshire Regiment had been refused on the grounds that there was a risk of infringement of Samuel Smith's trade mark. Additionally, by October 2009 Samuel Smith's claim was underway.

In relation to the other beer, Yorkshire Bitter, Cropton were able to rely fully on the defence that their use of the white rose symbol was an indication of geographical origin and in accordance with honest practices in industrial and commercial matters. Marks & Spencer, who sold the beer, had been in dispute with Samuel Smith over the use of the white rose symbol, and neither party had informed Cropton (they subsequently settled). Cropton therefore did not know about the alleged infringement. It was also significant that M&S had designed the beer bottle label.

Further, the claimant succeeded in his claim for passing off, but again only in relation to Yorkshire Warrior.

This case demonstrates that contextual factors can mean infringement only arises after a particular point in time determined by the defendant's knowledge. In this case the defence under Section 11(2)(b) ceased to be available once the knowledge and actions of the defendant were no longer consistent with honest practices. Mr Justice Arnold also emphasised that this was a case ideal for mediation, and that similar future cases should consider this as early as possible, as here the costs were totally out of proportion to the claim.

For the full text of the decision, click here.

COPYRIGHT

ITV Broadcasting Ltd and others v TV Catchup Ltd [2011] EWHC 1874 (Pat), 18 July 2011

TV Catchup Limited (TVC) operated a live-streaming website on the internet which allowed users to view live UK television. ITV Broadcasts Ltd (ITV) claimed that TVC's broadcasts infringed broadcasters' rights, constituting a communication to the public by electronic transmission and therefore was an act restricted by copyright under Section 20(1)(c) of the Copyright, Designs and Patents Act 1988 ("CDPA").

In the Judge's provisional view, the acts of TVC in intercepting the claimants' broadcasts (and works comprised therein) and making them available via the internet amounted to acts of communication to the public, but this question will be referred to the ECJ. Whether the 1-40 seconds of buffering time that occurred during the streaming amounted to a substantial part of a film was not determined – the Judge preferring to wait for the ECJ decision in Football Association Premier League v QC Leisure. The Judge did opine however that there is no reproduction of the broadcasts (as distinct from films), as what exists in the buffers cannot properly be regarded as part of the broadcast – however the ECJ will be referred a question on this too.

For the full text of the decision, click here.

Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents) [2011] UKSC 39, 27 July 2011

The Supreme Court has handed down its first intellectual property related decision, ruling on a copyright infringement case. The claim originated in the US and revolves around the manufacture and sale of replica Star Wars "Imperial Stormtrooper" helmets and armour, made from the original moulds. The Supreme Court found that the helmets could not be classified as "sculptures" within the meaning given in the Copyright Designs and Patents Act 1988, and as such the UK copyright subsisting in them had already expired 15 years after first manufacture, allowing the defendant to be free to make and sell them without infringing copyright. However, in a significant development, the Court did uphold Lucasfilm's claim that the US copyright infringement is justiciable in the UK.

This ruling confirms that it is actual films that are the artistic works, not the 3D props used in them. Therefore, full copyright protection in the UK for 3D objects will generally continue to be limited to works of fine art. This decision allows claims for foreign copyright infringement to be dealt with by the English courts, so long as that court has personal jurisdiction over the defendant. This could have significant implications for future copyright litigation.

For our Law Now of the decision, click here.

The Newspaper Licensing Agency Limited and others v Meltwater Holding BV and others [2011] EWCA Civ 890, 27 July 2011

The Court of Appeal has upheld a decision of the High Court that companies who aggregate extracts of online content and make it available to end users as an online "news clipping" or media monitoring service require a licence from the publishers of the original articles. Further, the end users themselves also require such a licence.

The Court of Appeal ruled that headlines alone were capable of being independent literary works and that extracts from articles were capable of being a substantial part of a literary work. The temporary copying defence was rejected on the basis that the copying was not incidental - the acts of reproduction are those occasioned by the voluntary human process of accessing the web page. The fair dealing defence also failed on the grounds that there was no criticism or review by the end user of the extracts or full articles, nor did it constitute reporting of current events. This decision will clearly have a significant impact on businesses that aggregate news content and make it available to end users, with both the aggregators and the end users now having to obtain licences. However, the decision is short of detailed reasoning and may therefore be vulnerable to appeal.

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 26/08/2011.

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