UK: IP Snapshot - April 2009

Last Updated: 29 April 2009
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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

TRADE MARKS

Application to register PICASSO and opposition no. 94853, 26 February 2009

A hearing officer has dismissed the Picasso estate's opposition to an application by Manders Paints Limited to register PICASSO for paints in class 2.

For the full text of this decision, click here.

Essex Trading Standards v Wallati Singh [2009] WLR (D) 81, 3 March 2009

The High Court (Divisional Court) allowed an appeal by a trading standards authority, ruling that a market trader had not established a defence to the criminal offence of trade mark infringement under section 92(5) of the Trade Marks Act 1994 (TMA). The market trader failed to show that he had objectively reasonable grounds for believing that the goods were genuine. This illustrates the near strict-liability nature of the offence under section 92 of the TMA, as the circumstances in which the defence under section 92(5) might be available will be difficult to establish.

For the full text of this decision, click here.

In the matter of opposition no. 93383 by Parker Intangibles LLC to application no. 2368347 by Tom Parker Limited, 4 March 2009

The Appointed Person refused to exercise her discretion under section 76(3) of the Trade Marks Act 1994 ("TMA") to refer an appeal against a hearing officer's decision in opposition proceedings to the High Court. The decision relates to the operation of section 76(3), which deals with the 'mechanics' of the referral, rather than to the substance of the appeal itself.

For the full text of this decision, click here.

Antartica Srl v OHIM, Case C-320/07 P, 12 March 2009

The ECJ rejected an appeal from the CFI, finding that the mark NASDAQ for sporting equipment and bikes would take unfair advantage of the distinctive character and reputation of the earlier mark NASDAQ for stock exchange price quotation services and financial services. The ECJ rejected the Appellant's argument that to qualify under Article 8(5), the reputation of the earlier mark should extend to the general public and not only to the consumers of the goods designated by that trade mark. The ECJ also rejected an argument that unfair advantage would only arise if it were proven that the consumers of the later mark specifically knew of the earlier mark, or the particular sector in which the later mark would be used were familiar with the earlier mark.

For the full text of this decision, click here.

Chocoladefabriken Lindt & Sprügli AG -v- Franz Hauswirth GmbH Case C-529/07, 12 March 2009

The Advocate General has given an Opinion in the first case before the ECJ to consider bad faith in a trade mark context. The Advocate General's view is that bad faith cannot be narrowly defined and that all relevant circumstances need to be assessed, with a mix of subjective and objective factors to be considered. She accepts that bad faith can in some circumstances include an intention to prevent others from using similar signs on similar products. This Opinion is of significance as bad faith is a powerful weapon which can be used to invalidate a trade mark and strike it from the Register.

For the full text of our Law-Now update on this, click here.

Alberto Jorge Moreira da Fonseca, Lda v OHIM, CFI, Cases T-318/06 to T-321/06, 24 March 2009

The CFI upheld the OHIM Board of Appeal in rejecting an application for a declaration of invalidity relating to four word/device marks incorporating the words "General Optica" for opticians' services. The applicant for the declaration had a pre-existing Portuguese business called "Generalóptica". The applicant failed as it had not shown that its sign was of more than "mere local significance" under Article 8(4) of the Regulation. The CFI provides guidance on Article 8(4), particularly on the requirement that the earlier sign should have more than mere local significance, on which there has not much previous case law.

For the full text of this decision, click here.

Anheuser-Busch Inc. v OHIM, Case T-191/07, 25 March 2009

The CFI upheld the OHIM Board of Appeal's decision and rejected Anheuser Busch's application to register the word BUDWEISER as a CTM for beer. The court ruled that the Czech company, Budejovkcy Budvar, had proved sufficient use under Article 43 of the CTM Regulation of its earlier international registration of the word BUDWEISER, through advertisements in newspapers and magazines circulating in Germany and Austria, and through invoices issued during the 5-year period before publication of Anheuser-Busch's CTM application.

For the full text of this decision, click here.

L'Oréal v OHIM, Case T-21/07, 25 March 2009

The CFI upheld the decision of OHIM's Board of Appeal, finding that there was a likelihood of confusion between the marks SPA and SPA THERAPY, where used in relation to cosmetic, perfumes and other products in class 3. Although the word 'spa' was descriptive of places in which cosmetic products are used or marketed, this did not mean that the mark was devoid of distinctive character or too weak to have an independent distinctive role. Further, cosmetic manufacturers frequently use different sub-brands, such that SPA THERAPY might lead consumers to believe that it related to a line of products marketed by the proprietor of the SPA mark.

For the full text of this decision, click here.

PATENTS

Novartis AG v Dexcel-Pharma Ltd [2009] EWHC 336(Pat), 3 March 2009

The High Court held that Novartis' patent was infringed and held it was not bound by a construction of the claims in an earlier validity case concerning the patent in suit.

For the full text of this decision, click here.

Thorn Security Limited v Siemens Schweitz AG [2008] EWCA Civ 1161, 9 March 2009

The House of Lords has refused an application by Siemens Schweiz AG for leave to appeal against the Court of Appeal's decision in its patent infringement case against Thorn Security Limited.

For the House of Lords minutes recording this decision, click here.

CONFIDENTIAL INFORMATION

Barclays Bank PLC v Guardian News and Media Ltd [2009] EWHC 591 (QB), 19 March 2009

The court granted an injunction to stop the publication of documentation relating to Barclays alleged attempts to avoid tax, despite them having been on the paper's website for a limited period of time. The court held there was a realistic chance of Barclays showing that the quality of confidence was not lost and that it was not disproportionate to the Guardian's right to free speech to prevent them from being bale to do so as they could still use the content, just not publish the actual documents.

For the full text of this decision, click here.

COPYRIGHT

Crosstown Music Co v Rive Droite Music Ltd, Mark Taylor & Paul Barry [2009] EWHC 600 (Ch), 25 March 2009

The High Court ruled that a provision in a music publishing agreement operated automatically to transfer copyright back to the composer in the event of a failure by the publisher to remedy a breach. The court rejected arguments that the clause was incapable of taking effect as an automatic revesting and should be construed as no more than an agreement to reassign. The court also held that the provision for automatic reversion was equally applicable to UK and foreign copyrights

For the full text of this 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 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 27/04/2009.

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