UK: IP Snapshot: March 2007

Last Updated: 14 March 2007
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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

Trade Marks

Quelle AG v OHIM (Court of First Instance)

The CFI upheld the decision of OHIM that the marks NARS and MARS were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Quelle, the owner of the mark MARS for footwear and sportswear in class 25, had opposed the application of NARS in respect of certain class 25 goods including clothing, footwear and headgear. The CFI found that the marks were visually dissimilar as the dominant element of Quelle’s mark was the graphic element to which the word "MARS" appeared only as a caption and also, that the marks were conceptually dissimilar as MARS referred to a planet while NARS had no meaning. Further, the CFI found the marks were phonetically similar; however, as the average consumer in this market attached more weight to the visual aspect of the marks than to other aspects, this similarity was insufficient to counteract the visual and conceptual differences between them.

For the full judgment in this case, click here.

Mundipharma AG v OHIM (Court of First Instance)

The CFI annulled the decision of OHIM that the marks RESPICUR and RESPICORT were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Mundipharma, the owner of the word mark RESPICORT for pharmaceutical and sanitary preparations and plasters, had opposed, on grounds of similarity, the application of the word mark RESPICUR for therapeutic preparations. The CFI identified two relevant categories of consumer: health professionals and end-users. For health professionals, the marks were conceptually dissimilar, as although they would understand the RESPI prefix as relating to respiratory ailments, they would identify the CUR suffix with cures for such ailments and the CORT element with drug delivery cortoids. In contrast, as the suffixes CUR and CORT would have no particular meaning to end-users, the marks would be conceptually similar as the dominant RESPI prefix, was identical. The visual and phonetic differences were insufficient to counteract the similarities. The marks were therefore somewhat similar for health professionals and highly similar for end-users. The CFI held that there was no likelihood of confusion among health professionals but there was a likelihood of confusion among end-users.

For the full judgment in this case, click here.

Ontex v OHIM (Court of First Instance)

The CFI upheld the decision of OHIM that the marks CURON and EURON were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Curon Medical, Inc., had opposed the application for the word mark CURON for certain class 10 goods, including surgical, medical and veterinary apparatus and other instruments and devices except X-ray instruments, on the basis there would be a likelihood of confusion with its CTM mark EURON registered for, among other things, surgical and medical apparatus and instruments. The CFI identified the relevant public as comprising of average and specialist consumers and concluded that the marks were: visually dissimilar due to differing first letters and the inclusion in EURON of the sequence e-u-r-o which overrode any similarity in the last four letters of the marks; phonetically dissimilar due to the different pronunciations of the first letters; and conceptually dissimilar as CURON alluded to medical treatment and healing, while EURON referred to Europe.

For the full judgment in this case, click here.

Aktieselskabet af 21 november 2001 v OHIM (Court of First Instance)

The CFI upheld an opposition based upon unfair advantage and detriment to distinctive character and repute brought by the proprietor of a word and device mark TDK for recording materials in class 9 to an application for the mark TDK in respect of "clothing, footwear and headgear" in class 25. The trade mark owner’s extensive promotion of the TDK marks through sponsorship of music and sports events was sufficient to generate goodwill and reputation in the marks, which could lead the public to believe that it had licensed use of the later mark applied for in relation to sports clothing. The decision illustrates the wider protection granted to marks with a reputation, which in this case had sufficient goodwill and repute to generate protection in relation to goods in which the proprietor had never traded.

For the full judgment in this case, click here.

Passing Off

Richard Dearlove ("Diddy") v Sean Combs ("P Diddy") (High Court)

Richard Dearlove, a record producer known as "Diddy" has won a claim for breach of a settlement agreement which had been reached in September 2006 with Sean Combs, known as "P Diddy". The parties had settled a passing off action on the basis that Sean Combs would not use the name "Diddy" in the UK (but was permitted to use "P Diddy"). The High Court found here that the settlement agreement had been breached after Sean Combs used the name "Diddy" on web pages at MySpace and YouTube, on a .com website and within the lyrics of songs from an album released in the UK.

For the full judgment in this case, click here.


Danone v Zygmunt Piotrowski (Invalidity Division of OHIM)

The Invalidity Division of OHIM has declared a registered design invalid because one of the images of the design that were filed as part of the registration included signs identical to earlier registered trade marks.

For the full judgment in this case, click here.

Confidential Information And Copyright

Cembrit Blunn Ltd and another v Apex Roofing Services LLP and another (High Court)

A business letter was found to have the necessary quality of confidence to be protected by the law of confidential information, but also to have been produced using the requisite degree of skill and labour for literary copyright to subsist.

For the full judgement in this case, click here.

Database Rights

Attheraces Limited v British Horseracing Board (Court of Appeal)

The British Horseracing Board ("BHB") succeeded in its appeal against a High Court judgment that it had abused its dominant position under an anti-competitive pricing policy for supplying data on horse racing to Attheraces Limited. Following the ECJ's finding in the separate case of BHB -v- William Hill, Case C-203/02, the subsistence of database rights in the BHB's pre-race data had effectively been denied. However, the Court of Appeal here found that the absence of database rights per se did not mean that BHB had necessarily abused its position by insisting on supplying data to Attheraces only under a data licence agreement.

For the full judgment in this case, click here.


Research in Motion UK Ltd v Inpro Licensing SARL and T Mobile (UK) Ltd (Court of Appeal)

The Court of Appeal dismissed Inpro’s appeal, confirming the lower court’s decision that Inpro’s patent was obvious. The Court of Appeal re-iterated the general principle that it may only examine obviousness if the trial judge has erred in applying the law. In this case, the trial judge had applied the test for obviousness set out in Windsurfing appropriately. Comment was also made on when the streamlined procedure is appropriate.

For the full judgment in this case, click here.

SanDisk Corporation v Koninklijke Philips Electronics NV & Ors (High Court)

The High Court has refused an application for an interim injunction that alleged that a campaign of European customs seizures and other enforcement measures by the owners of various patents for MP3 compression technology amounted to anti-competitive behaviour and an abuse of a dominant position. The High Court declined jurisdiction on the basis that no harm had or would be suffered in the UK, and that the claimant did not have a good arguable case.

The case demonstrates the legitimate use of customs seizure powers as part of a wider patent dispute, as well as setting out useful guidance on the application of the jurisdictional regime of the Brussels Regulation for matters of IP infringement. Finally, the Court considered in what circumstances the enforcement of patent rights might be considered an abuse.

For the full judgment in this case, 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 13/03/2007.

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.