UK: IP Snapshot - July 2009

Last Updated: 9 July 2009
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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


Harwin International LLC -v- OHIM, Case T-450/07, 12 June 2009

In invalidity proceedings a request to prove use was properly made by the registered trade mark owner in the course of making observations to OHIM, to which the applicant for invalidity responded with evidence of use. It was wrong for the Board of Appeal to find that an express request to prove use had not been made by the trade mark owner.

For the full text of this decision, please click here.

Victor Guedes - Industria e Comercio SA -v- OHIM, CFI, Case T-151/08, 11 June 2009

The CFI upheld the Board of Appeal's decision that there was no likelihood of confusion between a device mark incorporating the word "gallecs" and earlier device marks incorporating the word "gallo", for various food products.

For the full text of this decision, please click here.

L'Oréal SA & others v Bellure NV and others, Case C-487/07, 18 June 2009

The ECJ delivered its judgement on the L'Oréal v Bellure case. This deals with whether imitation perfumes, which were sold by reference to the original L'Oréal SA ("L'Oréal") products, infringed L'Oréal's trade marks and if such comparisons were protected as permissible comparative advertising.

The ECJ held that, following the public making a link, unfair advantage can be taken by a third party even if the use is not detrimental to the distinctive character or the repute of a mark or more generally, its proprietor, in accordance with Article 5(2) of Directive 89/104 (the "Trade Marks Directive"). It was also held that price comparison lists were a form of comparative advertising and that the proprietor of a registered trade mark is entitled to prevent the use of this by a third party, in a comparative advertisement if they do not satisfy all the conditions laid down in the Article 3a(1) of Directive 84/450 (the "Comparative Advertising Directive"). Under this Article, comparative advertising is permitted. An advertiser who states, explicitly or implicitly, in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents 'goods or services as imitations or replicas' within the meaning of Article 3a(1) which is unlawful and accordingly takes unfair advantage of the reputation of that mark.

For our Law-Now analysis this decision, please click here.

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

The ECJ has given its first ruling on the meaning of bad faith in the context of EC trade mark law. When assessing bad faith, national courts must consider the situation as it was at the time the application to register the sign as a trade mark was initially filed, taking into account all of the objective and subjective factors relevant to the particular case. This includes whether or not the applicant knew that a third party was already using the sign at the time of registration, the applicant's intention to prevent that third party from continuing to use such a sign and the degree of legal protection enjoyed by each of the signs. Bad faith is a powerful weapon: it can be used to invalidate a trade mark and remove it from the register, and is particularly useful as a counterclaim for an infringement action.

For the full text of this decision, please click here.


HMRC announce new customs seizure procedures for goods detained from Friday 3 July 2009

HMRC have announced new procedures for dealing with the detention and seizure of goods suspected of infringing intellectual property rights (IPRs). Under the new rules HMRC will only detain goods pending the outcome of court proceedings instituted by rights holders within a maximum period of 20 working days from notification by HMRC, and will only formally seize goods if directed to do so by the court. The changes bring the procedures for goods suspected of infringing trade marks and copyrights in line with the procedures governing goods suspected of infringing patent or design rights. The news is disappointing for rights holders who may now have to devote more time and resources to litigation.

For our Law-Now analysis of this decision, please click here.

Digital Britain - the final report, 17 June 2009

The Digital Britain Report sets out the Government's plans across a broad range of communications technologies to ensure Britain's communications infrastructure and content remain as competitive, inclusive and forward-looking as possible. At 245 pages long the report is potentially momentous and far-reaching. Controversially the report spells out the Government's intention to intervene to develop the BBC's role, and to modify and further extend the powers Ofcom; it restates the UK's commitment to Next Generation communications and sets out proposals for a legal and regulatory framework for intellectual property in a digital world. After significant consultation with industry and the general public, the Government's plans have a major impact on the nature and pace of development of the nation's technological and educational capabilities for years to come.

For our Law-Now analysis of this decision, please 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 08/07/2009.

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