UK: IP Snapshot - October 2012

Bringing you regular news of key developments in intellectual property law.


IG Communications Ltd v OHIM, General Court, Case T-301/09, 26 September 2012

The EU General Court has found that the mark CITIGATE, applied for as a Community Trade Mark in respect of advertising and consultancy services and design services, infringed the CITIBANK family of marks. Infringement was found to occur either by similar mark/similar goods infringement where the services were similar to those for which the earlier marks were registered, or, where they were dissimilar, because they took unfair advantage of or caused detriment to the distinctive character or repute of the earlier marks.  The General Court's comments on the concept of a "family" of marks are of particular interest.

For the full text of the decision, click here.

Wesergold Getränkeindustrie GmbH & Co. KG v OHIM, Case T-278/10, 21 September 2012

The EU General Court has annulled the Board of Appeal's decision in opposition proceedings regarding an application for a Community Trade Mark registration of the mark WESTERN GOLD with regard to spirits, in particular whisky. The opponent had claimed that the Community Trade Mark sought would infringe the earlier registered trade marks 'WeserGold', 'Wessergold' and WESERGOLD'.

The General Court agreed with the Board of Appeal that there was a low degree of similarity between the goods sold under the trade marks and that the marks themselves were significantly conceptually different (due to the difference in meaning between 'western' and 'weser') so as not to cause confusion. However, the court found that the Board of Appeal had erred in finding that the applicant had not claimed that the earlier marks had acquired enhanced distinctiveness through use.

For the full text of the decision, click here.

Reddig GmbH v OHIM, Case T-164/11, 19 September 2012

The EU General Court has upheld the decision of the Board of Appeal in relation to the invalidity of a Community Trade Mark for the shape of a knife handle. The Court held that the essential features of the mark were all exclusively functional. The fact that the knife handle also resembled the shape of a fish or a dolphin was irrelevant. The Court held that if the sum of the exclusively functional elements results in the creation of an ornamental image, this is not sufficient to avoid Article 7(1) of the Community Trade Mark Regulation, which states that signs constituting the shape of goods which is necessary to obtain a technical result cannot be registered. Accordingly, the claimant's application was dismissed.

For the full text of the decision, click here.

Starbucks (HK) Ltd. v British Sky Broadcasting Group Plc & Ors [2012] EWCA Civ 1201 (13 September 2012)

Two divergent High Court decisions in respect of Community Trade Mark infringement and invalidity proceedings, involving the same defendant's intended use of the name 'NOW TV' for a television service, have been upheld by the Court of Appeal. In the first case, the High Court had refused the application for injunction and ordered a stay of the infringement proceedings. Conversely, in the other case, the High Court had ordered an expedited trial and refused the respondent's application for a stay, referring to special grounds under Article 104(1) of the Community Trade Mark Regulation.

The Court of Appeal clarified that issues asserted by the claimants such as the existence of a claim for passing off, the length of time before invalidity proceedings are expected to come before OHIM, or the reactive nature of an application to OHIM, will not constitute special grounds. In the second case, the High Court had nevertheless been entitled to find exceptional circumstances of urgency meriting refusal of the application for stay. This was because the launch of the respondent's service under the allegedly infringing name was imminent and would swamp the claimant's goodwill. The situation had also been unusual in the sense that a delay of the launch by interim relief would have been inappropriate. Conversely, the judge in the first case had been entitled to take an opposing view because the applicant had not shown urgency in launching its own service.

For the full text of the decision, click here.

Video Research USA, Inc. v OHIM, Case T-267/11, 19 September 2012

The EU General Court has upheld the decision of the OHIM Board of Appeal in relation to the failure of an applicant to apply for renewal of the registration of a Community Trade Mark within the time limit provided. The applicant had applied for restitutio in integrum, stating that the failure to renew was due to a combination of human error by the applicant's representative and a computer programming error. The Court held that the requirement to take "all due care" under Article 81 of the Community Trade Mark Regulation extended not only to applicants, but also to their agents. In this regard, it was insufficient for the applicant to state that he had fulfilled the requirement by selecting a reputable and experienced law firm that specialised in trade mark law. The actions of the representatives are to be considered actions of the trade mark proprietor, and the proprietor's representative had clearly failed to adhere to this standard. The action was rejected in its entirety.

For the full text of the decision, click here.

National Lottery Commission v OHIM, General Court, Case T-404/10, 13 September 2012 

The EU General Court has overturned a decision of the Board of Appeal regarding the well known "Crossed Fingers" logo used for the National Lottery. The Board had refused the National Lottery Commission's appeal against a finding that its trade mark registration for the logo was invalid due to an alleged prior copyright owned by an Italian national. The General Court found that the Board of Appeal had not approached the matter correctly as it may have misinterpreted provisions of Italian law concerning authenticity of documents.

For the full text of the decision, click here.

United States Polo Association v OHIM, Case C-327/11 P, 6 September 2012

The ECJ has rejected an appeal against the EU General Court's decision that the marks U.S. POLO ASSN. and POLO-POLO were likely to be confused in relation to the Class 24 category of textiles, in particular domestic textile products, on the basis that the signs at issue were visually, phonetically and conceptually similar. The ECJ found that both the Board of Appeal and the General Court were correct in their analysis and application of case law. The grounds of appeal brought forward by the opponent were either unfounded or inadmissible, primarily because they were challenging findings of fact which were not reviewable by the ECJ.

For the full text of the decision, click here.


Emma Delves-Broughton v House of Harlot Limited, 18 May 2012, Patents County Court

In a rare decision on moral rights, the PCC has upheld a claim that the manipulation of photographs can constitute derogatory treatment, and therefore a breach of the photographer's moral rights, despite the judge's view that the treatment was neither "mutilation" of the photo nor treatment likely to affect the photographer's reputation adversely.

For the full text of the decision, click here.

Destra Software Ltd v Comada (UK) LLP and others [2012] EWPCC 39, 11 June 2012

The PCC has dismissed an application to transfer a case regarding the use of fund management software which the defendants had commissioned from the claimant to the High Court. The claimant had alleged that the defendants had exceeded the terms of their licence.

The defendants applied for the case to be heard in the High Court due to the complexity of the issues. The claimant responded that he was a sole trader and unable to bring the claim in the High Court. Instead, the claimant applied to have the preliminary issue of ownership and the licence to be heard by the PCC. The court found that the preliminary issue was one that would be suitable for the PCC to examine and dismissed the application for the transfer.

For the full text of the decision, click here.


Liversedge v Owen Mumford Limited & Abbott Laboratories Limited [2012] EWPCC 40 September 2012

The PCC has held that an award of costs will not exceed the £50,000 cap on recoverable costs in the PCC even where there are two winning defendants who have been separately represented. If the single cap is likely to be a concern to the defendants, this should be raised early in proceedings, at the CMC.

For the full text of the decision, click here.

Actavis Group PTC EHF & Anor v Sanofi Pharma Bristol-Myers Squibb SNC [2012] EWHC 2545 (Pat)

The PCC has referred two questions of interpretation of Article 3 of Regulation 469/2009/EC regarding supplementary protection certificates (SPC) for medicinal products to the CJEU for a preliminary ruling.

The questions have arisen in invalidation proceedings against the proprietor of an SPC covering the combination of the anti-hypertensive drug irbesartan and hydrochlorothiazide (HCT). The SPC covering the active ingredient alone has expired, but the combination SPC will remain valid until 14 October 2013. The claimant, who intends to market both the active ingredient and the combination product, argues that the combination SPC is invalid because the combination product was not specified or identified in the patent claims. The current test for what is meant by 'protected by a basic patent in force', which precludes the grant of SPCs relating to active ingredients which are not specified in the claims of the basic patent, has resulted in divergent rulings in parallel cases across Europe. The Patents Court therefore chose to request clarification on the interpretation of Article 3 from the CJEU.

For the full text of the decision, click here.

Vernacare Limited v Environmental Pulp Products Limited [2012] EWPCC 41, September 2012

The PCC has held that a patent for a disposable washing bowl used in hospitals and care homes was valid and infringed by two versions of the defendant's washing bowl. The PCC rejected the defendant's arguments that the patent should be declared invalid based on obviousness over cited prior art and common general knowledge as well as invalid added matter. The case demonstrates the benefits of using the PCC for simple patent disputes in that the trial was held and, the judgement was given, all in a day.

For the full text of the decision, click here.

Eli Lilly & Company v Human Genome Sciences, Inc [2012] EWCA Civ 1185 (05 September 2012)

Further to the Supreme Court's recent decision that Human Genome Sciences' patent for Neutrokine-α was not invalid for lack or industrial applicability, the outstanding validity issues relating to three claims, which were remanded by the Supreme Court, have been considered by the Court of Appeal. The Court upheld Kitchin J's decision that claim 13 was valid (despite Eli Lilly's contention that it was insufficient), yet rejected Kitchin J's findings that claims 18 and 19 were also invalid for insufficiency.

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

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 30/10/2012.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.