UK: IP Snapshot: July 2007

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.

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