UK: IP Snapshot - September/October 2008

Last Updated: 15 October 2008
Article by Nick Beckett, Isabel Davies and Tom Scourfield

TRADE MARKS

Land Securities PLC - v- Registrar of Trade Marks (High Court)

The High Court has overturned the UK IPO's previous decision to refuse to allow the names of shopping centres to be registered as trade marks in class 35. The Court relied upon the ECJ's decision in Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873, which related to retail services, finding that there was no reason in principle why a shopping centre could not be said to be providing retail services and building goodwill in its brand.

For the full text of the decision, click here.

Oakley Inc. v OHIM (CFI)

The CFI has upheld the decision of the OHIM Board of Appeal that a CTM for O STORE, registered in respect of, generally, "Retail and wholesale services, including on-line retail store services", as well as for retail services in respect of certain specific categories of goods, should be declared partially invalid in light of an earlier French trade mark registration for THE O STORE. In particular, having noted that many manufacturers of goods also have their own branded retail outlets, the CFI concluded that retail services in respect of specified goods were similar to such goods, because they were complementary and they were offered at the same point of sale.

For the full text of the decision, click here.

Minimax GmbH & Co KG v Chubb Fire Limited (High Court)

The High Court allowed an appeal from a hearing officer's decision and rejected Chubb Fire Limited's opposition to the registration of the word MINIMAX as a trade mark by Minimax GmbH & Co KG. The court found that there was no proper basis for the hearing officer to have concluded that there remained a sufficient residual reputation in the MINIMAX name for Chubb to succeed in a passing off action and oppose the application under s.5(4)(a) of the Trade Marks Act 1994.

For the full text of the decision, click here.

Honda Motor Europe Limited v OHIM (CFI)

The CFI has upheld the OHIM Board of Appeal decision that there is a likelihood of confusion in Spain between the earlier figurative mark SEAT (for vehicles and spare parts) and the applicant's word mark MAGIC SEAT, applied for in respect of car seats. The CFI found that "seat" was the dominant component in the opponent's figurative mark for SEAT and that the "S" was merely a decorative element. They also considered that SEAT may be likely to be referred to in the Spanish way as two syllables (like the registered mark). This illustrates the significance of the relevant territory for applying Article 8(1)(b) of the CTM Regulation. Although the word "seat" does not exist in the Spanish language, it had acquired its own meaning in Spanish in so far as it described the car manufacturer and therefore a likelihood of confusion was found.

For the full text of the decision, click here.

Whirlpool Corporation and others v Kenwood Limited (High Court)

A High Court decision involving a trade mark dispute between two rival retro-style food mixers has demonstrated the difficulty of proving infringement on the basis of unfair advantage or detriment. In Whirlpool v Kenwood, Whirlpool argued that the trade mark of their 'KitchenAid' food mixer, the bodywork of which was registered (in the form of 3 different images) as a CTM, had been infringed by Kenwood's rival 'KMix' mixer. In the alternative, Whirlpool argued that Kenwood were liable for passing off. The High Court found that although the finished appearance of the KitchenAid product was sufficient to indicate trade origin, owing to the distinctiveness of the design and the discerning tastes of the relevant consumers for such a high-end product, the KMix did nothing more than call to mind the KitchenAid product. There was not any, nor likely to be any, actual confusion between the products. Alternative unfair advantage and detriment arguments failed as the High Court found the distinctive character or repute of the KitchenAid mark would remain untouched by the competition, despite the KitchenAid product potentially losing market share on the back of the KMix's presence on the market.

For the full text of the decision, click here.

PATENTS

Oxonica Energy Limited v Neuftec Limited (Patents Court)

The Patents Court ruled on the interpretation of an ambiguous royalty clause in a patent and know how licence. The issue was whether the definition of "Licensed Products" in the licence deed should be read to mean "the claims in the Licensed Application or Licensed Patent, as the case may be" or instead "the claims in the Licensed Application or Licensed Patent, or any of those", and what the Licensed Application constituted. The Court held that where ambiguity arises in interpreting a contract, the Court must "decide what the licence deed would convey to a reasonable person who has all the background knowledge that would reasonably have been available to the parties in the situation in which they were at the time of the agreement". The Court resolved the issue by deciding upon an interpretation of the term "Licensed Products" which reflected that the licence was not only a patent licence but a know how licence and which made the most business sense to the arrangement between the parties. The Court found in favour of the licensor (Neuftec) and that the claims of the PCT application were a yardstick to determine the royalty-bearing products under the know how licence.

For the full text of the decision, click here.

Zipher Ltd v Markem Systems Ltd & Anor (Patents Court)

Following a run of cases between the parties in this patent infringement case, Floyd J in the Patents Court granted an injunction to enforce an undertaking, which had been given in previous entitlement proceedings, to limit the scope of claims in pending patent applications deriving from the priority document.

For the full text of the decision, click here.

PRACTICE AND PROCEDURE

Brand Protection and Company Names : New right of complaint to the Company Names Adjudicator under Part 5 of the Companies Act 2006, in force since 1 October 2008

From 1 October 2008, corporate names will be regulated by Part 5 of the Companies Act 2006. A new right is provided for third parties to complain of the choice of a company name before a new body, the Company Names Adjudicator, based at the UK IPO (Intellectual Property Office).

This new right enables an objection to be made to a company's registered name on the basis that it is either "the same as a name associated with the applicant in which he has goodwill" or "sufficiently similar" that it would be likely to mislead when used in the UK by "suggesting a connection between the company and the applicant". The complaint is based upon a "name" associated with the complainant, so can apply to a wide range of rights: company names, trading names, brand names and registered trade marks.

For the full text of our Law-Now update, 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 14/10/2008.

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