UK: IP Snapshot - November 2009

Last Updated: 13 November 2009
Article by Nick Beckett, Isabel Davies and Tom Scourfield

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


Simba Toys GmbH & Co. KG v Seven Towns Limited (OHIM Board of Appeal) 1 September 2009

OHIM's Board of Appeal rejected an application for invalidity against a CTM registration for the three-dimensional shape of a "Rubik's Cube" registered in class 28 for three-dimensional puzzles. OHIM considered that the mark was not was devoid of distinctive character, nor did it consist exclusively of the shape of the goods necessary to obtain a technical result. The key aspect of the Rubik's cube (the rotational grid arrangement) could not be derived from the depiction in the CTM application, so the mark was valid and registrable.

For the full text of the decision, click here.

Daimler AG v Sany Group Company Limited (High Court) 23 October 2009

The High Court found that the well-known Mercedes-Benz three pointed star trade mark was not infringed by a similar three pointed star trade mark owned by Sany, a Chinese manufacturer of construction machinery. Sany's counterclaim for part cancellation based on non use was also rejected.

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

Joop! v OHIM, Case T-75/08 and Joop! v OHIM (CFI) 30 September 2009

The Court or First Instance of the European Court of Justice rejected an application by JOOP! GmbH to register two figurative CTMs, consisting of a plain exclamation mark, in relation to jewellery, clothes and related goods. The marks were considered devoid of distinctive character, and would not be perceived "immediately" as an indication of origin. The applicant's evidence to demonstrate that the marks had nevertheless acquired distinctive character was also rejected as being insufficient. Evidence consisting of three photos of jeans bearing a label with an exclamation mark which had been on sale in Germany would not be sufficient to demonstrate acquired distinctiveness across the Community.

For the CFI press release summary of the decision (the decision is not available in English), click here.

PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH (ECJ) 6 October 2009

The European Court of Justice ("ECJ") has confirmed that, for the purposes of Article 9(1)(c) of the Community Trade Mark ("CTM") Regulation, a CTM may have a "reputation in the Community" and therefore be entitled to protection under Article 9(1)(c), if it has a reputation in only one Member State as this may constitute a "substantial part of the Community".

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

Makro Zelfbedieningsgroothandel CV and others v Diesel SpA (ECJ) 15 October 2009

Branded goods which are placed on the market in one EEA member state can be freely traded by third party distributors and sold in other member states, provided that the goods are first placed on the market by the trade mark owner or with his consent.

Recent decisions concerning the meaning of consent have involved movement of non EEA goods into the EEA. These cases have followed a similar pattern, generally being decided in favour of trade mark owners, following repeated application of the ECJ's judgment in Davidoff/Levi Strauss, Cases C-414 to 416/99, which requires the trade mark owner's consent to sell in the EEA market to be clearly demonstrated. This recent case examines whether the same test applies in relation to goods that are first placed on the market within the EEA, and concludes that it should.

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


Phonographic Performance Limited v British Hospitality Association, the British Retail Consortium and other interested parties (Copyright Tribunal) 18 September 2009

The Copyright Tribunal has determined that the increase in rates charged by the Phonographic Performance Limited ("PPL") for licences that permitted licensees, such as pubs, shops, factories and offices, to be able to play music in their public spaces, were disproportionate. PPL had implemented a new pricing structure to reflect changes in the law and sought to put a greater emphasis on the size of the establishment when determining the rates payable. This resulted in some increases in rates for the largest shops/supermarkets of almost 200% and for the largest pubs and restaurants it was over 400%. The Copyright Tribunal held that the new pricing structure was inappropriate and, therefore, ordered a return to the previous tariff scheme and imposed a 10% limit on the increase in rates from the previous rates that had been used.

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


E I du Pont Nemours & Co v United Kingdom Intellectual Property Office (Court of Appeal) 17 September 2009

The Court of Appeal allowed an appeal against a High Court decision refusing Du Pont a paediatric extension to a supplementary protection certificate (SPC) because not all the supporting documents required by the Regulation on the testing of medicines for paediatric use had been provided.

Jacob LJ upheld the strict interpretation of the requirements of the Paediatric Regulation given by the deputy High Court judge, but held that the absence of these documents was an irregularity which could be rectified under Article 10 of the SPC Regulation. By the time of the appeal hearing Du Pont was in a position to provide the necessary documents, and the Intellectual Property Office was required to grant an extension of the SPC.

For the full text of the decision, click here.

Generics v Synaptech (Court of Appeal) 16 October 2009

The Court of Appeal has referred questions to the ECJ to determine the meaning of "the first authorisation to place the product on the market" in the European Supplementary Protection Certificate Regulation (1768/92/EEC). The Court of Appeal required guidance as to whether an SPC could be granted only on the basis of the first authorisation compliant with the European medicines directive (Directive 65/65/EEC) or whether any authorisation that enabled the product to be placed on the market in the Community or EEA would be sufficient.

For the full text of the 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

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 12/11/2009.

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