UK: IP Snapshot – December 2009


Frag Comercio Internacional, SL v OHIM (CFI) 11 November 2009

The Court or First Instance of the European Court of Justice rejected an application by Frag Comercio Internacional to overturn the OHIM Board of Appeal's finding that there was no likelihood of confusion between the proposed figurative mark "green by missako" and the figurative mark containing the word "misako". The CFI upheld that the term "green" and the representation of the sun were the dominant elements in the overall impression given by the proposed mark, and considered that the writing at the bottom of the mark "by missako" was nearly illegible. Accordingly, there was found to be no visual, phonetic or conceptual similarity between the signs and, therefore, there were insufficient grounds for finding a likelihood of confusion in the perception of the relevant public.

For the full text of the decision, click here.( )

Wasabi Frog Ltd -v- Miss Boo Ltd & Another, High Court, 4 November 2009

An interim injunction was granted in favour of an online clothing retailer called to prevent a third party trading as "Miss Boo", also in clothing. Interesting use was made of arguments concerning internet key words, which the Court accepted.

For the full text of the decision, click here.( )

Application by Omega Engineering Inc to register the trade mark OMEGA in class 14 and the opposition by Omega SA, 12 November 2009

The hearing officer of the IPO dismissed the opposition by Omega SA (a Swiss company) against the registration of the mark 'OMEGA' for goods in class 14 by Omega Engineering Inc. The coexistence agreement entered into between the parties in 1984 applied. In this agreement Omega Swiss had consented to the later registration by Omega Engineering for the goods described therein. Omega Swiss was wrong to argue that they had given consent to Omega Engineering registering the mark in relation to class 9 (the International Classification of Goods and Services for the Purposes of the Registration of Marks) goods only. The agreement did not refer to class, and the reasonable person would not interpret the agreement to be limited to classes. In addition, the same goods may be registered in a number of classes.

For the full text of the decision, click here.( )


Evans and another (t/a Firecraft) v Focal Point Fires plc, High Court, 10 November 2009

In a recent ruling, the High Court held that the claimants, a partnership manufacturing and trading in stone fireplaces under the business name 'Firecraft', were entitled to summary judgement against the defendant (who used the mark "Firecraft" in connection with sale of gas and electrical fires) in respect of a claim for passing off.

This ruling follows an earlier decision by an Intellectual Property Office (IPO) hearing officer that registration by the defendant of the "Firecraft" mark was invalid under section 5(4)(a) of the Trade Marks Act 1994 (TMA) as it would have been liable to prevention by the claimants under the law of passing off. The High Court further held that that the defendant could not challenge the decision of the hearing officer due to application of cause of action estoppel and issue estoppel and also because this would be an abuse of process, thereby showing that the decisions of hearing officers are in some cases instrumental to the decisions of courts in trade mark cases.

For the full text of the decision, click here.( )


R v Christopher Gilham, Court of Appeal (Crim), 9 November 2009

The Court of Appeal (Criminal Division) dismissed an appeal and upheld the conviction of an individual under section 296ZB of the Copyright, Designs and Patents Act ("CDPA") for the sale of "Modchips" designed to allow counterfeit video games to play on a games console. It was a matter of common sense that a person who plays a counterfeit DVD on his games console, and sees and hears copyright material, would make a copy of at least a substantial part of the game, even though at any one time the material in the console memory and on the screen and audible only a very small part of that work.

For the full text of the decision, click here.( )

Scopelight Limited and others v (1) Chief of Police for Northumbria (2) Federation Against Copyright Theft Limited, Court of Appeal, 5 November 2009

The Court of Appeal allowed an appeal by the Federation Against Copyright Theft Limited (FACT) and the Northumbria police, confirming that section 22 of the Police and Criminal Evidence Act 1984 did not prevent the police from retaining property seized from the claimants under PACE once they had decided not to prosecute them. The police had the power to determine whether it was necessary in all the circumstances that the property should be kept for investigation in connection with an offence, or for use as evidence at a trial for an offence (such as a private prosecution by FACT).

For the full text of the decision, click here.( )


Grimme Landmaschinenfabrik v Scott (t/a Scotts Potato Machinery), High Court, 3 November 2009

Although a claimant has been successful in obtaining a judgment that the defendant infringed its patent and design rights, the defendant was also successful in bringing a counterclaim for unjustified threats. A letter written by the claimant's solicitors to the defendant's customers was not justified as it was not specific as to which of the defendant's roller designs were alleged to infringe.

For the full text of the decision, click here.( )


Boegli – Gravures SA v Darsail-ASP Ltd and another, High Court, 29 October 2009

The High Court has held that where a company director does more than vote at board meetings, he or she can be held personally liable for acts of patent infringement, in particular where the director was personally involved in the infringing acts.

The Court considered that the fact that the director was founder, manager and shareholder of the infringing company was not sufficient to make him personally liable for the company's actions. However, the fact that he had taken an active part in negotiations and had actually supplied infringing foil samples was considered sufficient to "pierce the corporate veil" and render him personally liable for patent infringement.

The Court also held that the supply to an investigator acting on behalf of a patentee, of a part which is an essential element of a patented invention, is not an infringement under section 60(2) of the Patents Act 1977. However, the test for threats to infringe would usually be met in these circumstances.

For the full text of the decision, click here ( )

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd (Court of Appeal) 22 October 2009

The Court of Appeal has again confirmed the principle in Article 69 of the European Patent Convention that the extent of protection of a patent is given by the patent claims and has provided further guidance on interpretation of patent claims containing reference numerals

The success or otherwise of any patent infringement claim will depend on the scope of the patent and it is therefore crucial to understand how the courts interpret the claim wording to identify the boundaries of the protection. The court is mainly concerned with identifying the inventor's purpose, given the claim wording. This case is a good demonstration of the rules of interpretation applied by the court to patents, the dominant consideration being the language used in the claim. The case involved two competitor airlines, this particular battle focussing on their seats and seating arrangements for first class passengers.

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

Medeva BV, BL, IPO, 16 November 2009

A hearing office at the Intellectual Property Office has rejected Medeva's SPC applications on the basis that for four out of five applications the basic patent did not cover the product for which protection was sought, and in respect of the fifth that the relevant marketing authorisation relied upon was granted in respect of a different set of active ingredients to the product for which an SPC was sought.

For the full text of the decision, click here.( )

For further information, please contact:

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 10/12/2009.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions