Leno Merken BV v Hageldruis Beheer BV: (Case C-149/11); [2012] WLR (D) 388
“The territorial borders of the member states should be disregarded in the assessment of whether a trade mark had been put to ‘genuine use in the Community’ within the meaning of article 15(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark (OJ 2009 L78, p 1).”
WLR Daily, 19th December 2012
Source: www.iclr.co.uk
“UK internet TV provider YouView has been sued for trademark infringement in a dispute over the product’s name.”
BBC News, 26th November 2012
Source: www.bbc.co.uk
“YouView, the much-delayed internet-connected TV service that finally launched earlier this year, may now have to change its name or face paying damages for trademark infringement after losing a high court appeal.”
The Guardian, 14th November 2012
Source: www.guardian.co.uk
“BSkyB has won a high court trademark battle over the name of its new internet TV service, Now TV.”
The Guardian, 2nd November 2012
Source: www.guardian.co.uk
Rintisch v Eder: C-553/11; [2012] WLR (D) 289
“Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trade marks meant that the proprietor of a registered trade mark was not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it was used in a form which differed from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form was itself registered as a trade mark. The article precluded an interpretation of a national provision intended to transpose it into domestic law whereby article 10(2)(a) did not apply to a ‘defensive’ trade mark which was registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it was used.”
WLR Daily, 25th October 2012
Source: www.iclr.co.uk
“Christian Louboutin has secured the trademark for the distinctive red used on the soles of shoes he designs, and the retailer Harrods has a trademark over the shade of green synonymous with its brand. Now confectionery giant Cadbury has won a lengthy court battle giving it the right to the trademark for the distinctive colour of purple it uses for the packaging of its milk chocolate.”
The Guardian, 2nd October 2012
Source: www.guardian.co.uk
“Until now taking legal action against others who copy creative work, brand names and logos or otherwise try to take advantage of someone else’s creativity has been beyond the reach of most people. That changes on Monday when the small claims track becomes available for intellectual property claims in England and Wales.”
The Guardian, 2nd October 2012
Source: www.guardian.co.uk
Pie Optiek SPRL v Bureau Gevers SA and others: Case C-376/11; [2012] WLR (D) 219
“The third sub-paragraph of article 12(2) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration meant that, in a situation where the prior right concerned was a trade mark right, the words ‘licensees of prior rights’ did not refer to a person who had been authorised by the proprietor of the trade mark concerned solely to register, in his own name but on behalf of that proprietor, a domain name identical or similar to that trade mark, but without that person being authorised to use the trade mark commercially in a manner consistent with its functions.”
WLR Daily, 19th July 2012
Source: www.iclr.co.uk
Budéjovický Budvar, národní podnik v Anheuser-Busch Inc [2012] EWCA Civ 880; [2012] WLR (D) 190
“Where a longstanding situation of honest concurrent user of the same mark for goods had come about, each user could register its mark, and each could stop third parties from using it, but neither could stop the other.”
WLR Daily, 3rd July 2012
Source: www.iclr.co.uk
Samsung Electronics (UK) Ltd v Apple Inc: [2012] EWCA Civ 729; [2012] WLR (D) 166
“Where the proprietor of a registered Community design, the validity of which was already in issue in proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) or another Community design court, brought a counterclaim alleging infringement of the design against a claimant who had issued a claim in a Community design court seeking a declaration of non-infringement, the stay of proceedings required by article 91(1) of the Community Design Regulation was a stay of the counterclaim, not the claim.”
WLR Daily, 30th May 2012
Source: www.iclr.co.uk
Wintersteiger AG v Products 4U Sondermaschinenbau GmbH (Case C-523/10); [2012] WLR (D) 117
“Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters meant that an action relating to infringement of a trade mark registered in a member state because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another member state could be brought before either the courts of the member state in which the trade mark was registered or the courts of the member state of the place of establishment of the advertiser.”
WLR Daily, 19th April 2012
Source: www.iclr.co.uk
“An Australian man has been ordered to transfer his ownership of the richardbranson.xxx domain name to UK entrepreneur Richard Branson.”
OUT-LAW.com, 22nd February 2012
Source: www.out-law.com
Frisdranken Industrie Winters BV v Red Bull GmbH (Case C-119/10); [2012] WLR (D) 20
“A service provider who, under an order from and on the instructions of another person, filled packaging which was supplied to it by the other person who, in advance, affixed to it a sign which was identical with, or similar to, a sign protected as a trade mark did not itself make use of the sign that was liable to be prohibited under that provision.”
WLR Daily, 15th December 2012
Source: www.iclr.co.uk
“Bookmaker William Hill has lost an appeal against a High Court ruling that found the gambling giant’s online casino brand 32Vegas infringed a rival company’s trademarks.”
The Lawyer, 25th January 2012
Source: www.thelawyer.com
“The UK’s Trade Mark Registry has partially revoked, but mostly upheld, Cadbury’s right to trade mark a particular shade of purple in relation to chocolate products it manufactures.”
OUT-LAW.com, 8th November 2011
Source: www.out-law.com
“Lady Gaga may call her fans ‘little monsters’ but it appears she has no love for Moshi Monsters, after taking legal action in an effort to stop the children’s social network using an animated character, singer Lady Goo Goo. The Paparazzi singer gained an interim injunction against the parent company of the wildly popular Moshi Monsters, banning Lady Goo Goo from performing songs on YouTube, the Guardian has learned.”
The Guardian, 13th October 2011
Source: www.guardian.co.uk
“The Patents County Court (PCC) will be able to order damages payments of up to £500,000 for infringement of copyright and trade mark rights under a new law that came into effect on Saturday.”
OUT-LAW.com, 3rd October 2011
Source: www.out-law.com
Interflora Inc and another v Marks & Spencer plc (Case C-323/09); [2011] WLR (D) 281
“Article 5(1)(a) of First Council Directive 89/104/EEC and article 9(1)(a) of Council Regulation (EC) No 40/94 on the Community trade mark was to be interpreted as meaning that the proprietor of a trade mark was entitled to prevent a competitor from advertising on the basis of a keyword which was identical with the trade mark and which had been selected in an internet referencing service by the competitor without the proprietor’s consent, where that use was liable to have an adverse effect on one of the functions of the trade mark. Article 5(2) of Directive 89/104 and article 9(1)(c) of Regulation No 40/94 was to be interpreted as meaning that the proprietor of a trade mark with a reputation was entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor had, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby took unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising was detrimental to that distinctive character (dilution) or to that repute (tarnishment).”
WLR Daily, 22nd September 2011
Source: www.iclr.co.uk
Budějovický Budvar, národní podnik v Anheuser-Busch Inc
“Acquiescence, within the meaning of article 9(1) of First Council Directive 89/104/EEC, was a concept of European Union law and the proprietor of an earlier trade mark could not be held to have acquiesced in the long and well-established honest use, of which he had long been aware, by a third party of a later trade mark which was identical with that of the proprietor if that proprietor was not in any position to oppose that use. Registration of the earlier trade mark in the member state concerned did not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in article 9(1).”
(Case C-482/09); [2011] WLR (D) 279
WLR Daily, 22nd September 2011
Source: www.iclr.co.uk
“The public would be likely to be confused if three original members of Bucks Fizz were allowed to register a trade mark that included the band’s name, the Intellectual Property Office (IPO) has ruled.”
OUT-LAW.com, 6th September 2011
Source: www.out-law.com
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