UK: IP Snapshot: July 2007

Last Updated: 12 July 2007
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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


Red Dot Technologies Ltd v Apollo Fire Detectors Limited (High Court)

The High Court has held that in cases of comparative advertising a claimant may be prevented from seeking an injunction if the defendant’s right to freedom of expression outweighs the damage which may be caused to the claimant as a result of the advertisement, even where the advertisement may be misleading. The court held that in a situation where the right to freedom of expression is at issue, it cannot grant an interim injunction preventing publication unless the claimant is ‘likely’ to establish at trial that the publication should not be allowed. This is a higher hurdle than the usual test established by American Cyanamid v Ethicon Limited that there must be ‘a real prospect of success’. In cases were a short-lived injunction is required for the court to have a fully effective hearing of the application, a lesser degree of likelihood may be sufficient. Further, the court has held that whilst Jacob LJ’s opinion (in the O2 case) that use of a trade mark in advertising may not be use for the purposes of section 10(1) of the Trade Marks Act 1994 is persuasive in the absence of an ECJ decision, it is not law.

For the full judgment in this case, click here.

Boehringer Ingelheim Limited and Others v Vetplus Limited (Court of Appeal)

The Court of Appeal has rejected an application for an interim injunction against the defendant’s comparative advertisement which showed both the claimant’s and the defendant’s nutritional supplements for dogs. As the court considered comparative advertising to be a form of freedom of expression, it held that the Human Rights Act 1998 applied. Consequently, the threshold to overcome for granting an interim injunction was higher than prescribed in American Cyanamid v Ethicon Limited. Further, the court held that it was not appropriate to apply to trade mark infringement actions the rule that the courts will not restrain the publication of a defamatory statement where there is an intention to justify it at the trial of the action (except where the statement is obviously untruthful and libellous), as is the rule in defamation and malicious falsehood cases.

For the full judgment in this case, click here.

Mars U.K. Ltd (OHIM Board of Appeal)

The Board of Appeal has annulled a decision of the examiner that Mars U.K. Ltd’s application to register "Whiskas purple" (specified as Pantone 248C) as a Community trade mark for cat food and cat milk should be rejected on the grounds that the applicant failed to demonstrate acquired distinctiveness for the purposes of Article 7(3) of the Community Trade Mark Regulation. The Board of Appeal confirmed that to establish acquired distinctiveness it must be demonstrated that a significant proportion of the relevant public within the EU, as a result of exposure to the mark, uniquely associate the mark with the applicant’s undertaking or economically-linked undertakings.

For the full judgment in this case, click here.

Antartica Srl v OHIM (Court of First Instance)

The Court of First Instance has held that an application to register a figurative mark containing the word "Nasdaq" was contrary to Article 8(5) of the Community Trade Mark Regulation as use of the mark would take unfair advantage of the repute of an earlier mark "NASDAQ", registered as a Community trade mark. In reaching its conclusion the Court of First Instance took into consideration the reputation of the NASDAQ mark among professionals active in the financial markets and also those members of the general public interested in such markets.

For the full judgment in this case, click here.

IVG Immobilien AG v OHIM (Court of First Instance)

The Court of First Instance has held that the Board of Appeal had erred in its approach in finding that a single letter mark "I" in a particular script and blue colour could not be registered as a Community trade mark. The Board had not considered all relevant factors, had jumped to its conclusion and made an error of law.

For the full judgment in this case, click here.

Armin Häupl v Lidl Stiftung & Co. KG (European Court of Justice)

This judgment followed a reference for a preliminary ruling from the Austrian courts on the interpretation of Articles 10(1) (use of trade marks) and 12(1) (grounds for revocation) of the Trade Mark Directive (89/104/EEC).

The ECJ ruled:

  1. The "date of the completion of the registration procedure" within the meaning of Article 10(1) must be determined in each Member State in accordance with the procedural rules on registration in force in that State; and
  2. Article 12(1) must be interpreted as meaning that obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute "proper reasons for non-use" of the mark.

For the full judgment in this case, click here.


The Flashing Badge Company Ltd v Brian David Groves (t/a Flashing Badges by Virgo and Virgo Distribution)

The High Court has held that copyright was infringed by the copying of badge designs. Acknowledging that designs are artistic works in which copyright subsists, the court had to determine whether the defendant could rely on section 51 of the Copyright, Designs and Patents Act 1988 which provides "it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design". Section 51 ensures that protection of designs is normally considered by reference to the applicability of design rights in the article itself. In finding that this section did not afford the defendant a defence, the court distinguished the decision in Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd and another [2004] EWCA Civ 886 which upheld the defence.

For the full judgment in this case, click here.


IGT v Comptroller General of Patents (High Court)

The High Court has rejected an appeal from the decision of a hearing officer of the UK Intellectual Property Office that four patent applications, dealing with computer gaming systems, were excluded from patentability under Article 52(2) of the European Patent Convention. The claimant’s patent applications related to the inclusion and operation of bonus games for an online gaming machine. The applications sought to achieve consistency in the allocation of bonus entries to players, and to facilitate games between players, whilst allowing players to control the timing of their playing a bonus game. The Court applied the 4-step test laid down in Aerotel/Macrossan, and found the applications related to a method for playing the game rather than new inventions.

For the full judgment in this case, click here.

Pozzoli SPA V Moulage Industriel de Perseigne SA (Court of Appeal)

The Court of Appeal has rejected an appeal against a decision that a patent for a 2-disc CD container (holding CDs vertically in moulded "seats" by central rosettes and physically separated) was invalid for obviousness. It has further held that the patent was not infringed by the defendant’s product – a container which stored CDs in parallel, each CD being held at its periphery by a slot and two tabs. In determining whether the patent involved an inventive step, the court applied the Windsurfing test emphasising that it is the difference between what is claimed and the prior art which is the critical factor. In this case, the court found that in aiming to reduce the height of 2-disc CD containers, it would be obvious to a person skilled in the art that the CDs should overlap and that they should be physically separated in a 2-to-1 tray. Even in the absence of a finding of invalidity, the appellant’s patent would not have been infringed as the defendant’s product had no upper and lower parts to separate CDs and it retained CDs in a different way.

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 11/07/2007.

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.