IP snapshot: March 2007

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

TRADE MARKS

Quelle AG v OHIM (Court of First Instance)

The CFI upheld the decision of OHIM that the marks NARS and MARS were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Quelle, the owner of the mark MARS for footwear and sportswear in class 25, had opposed the application of NARS in respect of certain class 25 goods including clothing, footwear and headgear. The CFI found that the marks were visually dissimilar as the dominant element of Quelle’s mark was the graphic element to which the word “MARS” appeared only as a caption and also, that the marks were conceptually dissimilar as MARS referred to a planet while NARS had no meaning. Further, the CFI found the marks were phonetically similar; however, as the average consumer in this market attached more weight to the visual aspect of the marks than to other aspects, this similarity was insufficient to counteract the visual and conceptual differences between them.

For the full judgment in this case, click here.

Mundipharma AG v OHIM (Court of First Instance)

The CFI annulled the decision of OHIM that the marks RESPICUR and RESPICORT were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Mundipharma, the owner of the word mark RESPICORT for pharmaceutical and sanitary preparations and plasters, had opposed, on grounds of similarity, the application of the word mark RESPICUR for therapeutic preparations. The CFI identified two relevant categories of consumer: health professionals and end-users. For health professionals, the marks were conceptually dissimilar, as although they would understand the RESPI prefix as relating to respiratory ailments, they would identify the CUR suffix with cures for such ailments and the CORT element with drug delivery cortoids. In contrast, as the suffixes CUR and CORT would have no particular meaning to end-users, the marks would be conceptually similar as the dominant RESPI prefix, was identical. The visual and phonetic differences were insufficient to counteract the similarities. The marks were therefore somewhat similar for health professionals and highly similar for end-users. The CFI held that there was no likelihood of confusion among health professionals but there was a likelihood of confusion among end-users.

For the full judgment in this case, click here.

Ontex v OHIM (Court of First Instance)

The CFI upheld the decision of OHIM that the marks CURON and EURON were dissimilar for the purposes of Article 8(1)(b) of the CTM Regulation. Curon Medical, Inc., had opposed the application for the word mark CURON for certain class 10 goods, including surgical, medical and veterinary apparatus and other instruments and devices except X-ray instruments, on the basis there would be a likelihood of confusion with its CTM mark EURON registered for, among other things, surgical and medical apparatus and instruments. The CFI identified the relevant public as comprising of average and specialist consumers and concluded that the marks were: visually dissimilar due to differing first letters and the inclusion in EURON of the sequence e-u-r-o which overrode any similarity in the last four letters of the marks; phonetically dissimilar due to the different pronunciations of the first letters; and conceptually dissimilar as CURON alluded to medical treatment and healing, while EURON referred to Europe.

For the full judgment in this case, click here.

Aktieselskabet af 21 november 2001 v OHIM (Court of First Instance)

The CFI upheld an opposition based upon unfair advantage and detriment to distinctive character and repute brought by the proprietor of a word and device mark TDK for recording materials in class 9 to an application for the mark TDK in respect of "clothing, footwear and headgear" in class 25. The trade mark owner’s extensive promotion of the TDK marks through sponsorship of music and sports events was sufficient to generate goodwill and reputation in the marks, which could lead the public to believe that it had licensed use of the later mark applied for in relation to sports clothing. The decision illustrates the wider protection granted to marks with a reputation, which in this case had sufficient goodwill and repute to generate protection in relation to goods in which the proprietor had never traded.

For the full judgment in this case, click here.

PASSING OFF

Richard Dearlove ("Diddy") v Sean Combs ("P Diddy") (High Court)

Richard Dearlove, a record producer known as "Diddy" has won a claim for breach of a settlement agreement which had been reached in September 2006 with Sean Combs, known as "P Diddy". The parties had settled a passing off action on the basis that Sean Combs would not use the name "Diddy" in the UK (but was permitted to use "P Diddy"). The High Court found here that the settlement agreement had been breached after Sean Combs used the name "Diddy" on web pages at MySpace and YouTube, on a .com website and within the lyrics of songs from an album released in the UK.

For the full judgment in this case, click here.

DESIGNS

Danone v Zygmunt Piotrowski (Invalidity Division of OHIM)

The Invalidity Division of OHIM has declared a registered design invalid because one of the images of the design that were filed as part of the registration included signs identical to earlier registered trade marks.

For the full judgment in this case, click here.

CONFIDENTIAL INFORMATION AND COPYRIGHT

Cembrit Blunn Ltd and another v Apex Roofing Services LLP and another (High Court)

A business letter was found to have the necessary quality of confidence to be protected by the law of confidential information, but also to have been produced using the requisite degree of skill and labour for literary copyright to subsist.

For the full judgement in this case, click here.

DATABASE RIGHTS

Attheraces Limited v British Horseracing Board (Court of Appeal)

The British Horseracing Board ("BHB") succeeded in its appeal against a High Court judgment that it had abused its dominant position under an anti-competitive pricing policy for supplying data on horse racing to Attheraces Limited. Following the ECJ's finding in the separate case of BHB -v- William Hill, Case C-203/02, the subsistence of database rights in the BHB's pre-race data had effectively been denied. However, the Court of Appeal here found that the absence of database rights per se did not mean that BHB had necessarily abused its position by insisting on supplying data to Attheraces only under a data licence agreement.

For the full judgment in this case, click here.

PATENTS

Research in Motion UK Ltd v Inpro Licensing SARL and T Mobile (UK) Ltd (Court of Appeal)

The Court of Appeal dismissed Inpro’s appeal, confirming the lower court’s decision that Inpro’s patent was obvious. The Court of Appeal re-iterated the general principle that it may only examine obviousness if the trial judge has erred in applying the law. In this case, the trial judge had applied the test for obviousness set out in Windsurfing appropriately. Comment was also made on when the streamlined procedure is appropriate.

For the full judgment in this case, click here.

SanDisk Corporation v Koninklijke Philips Electronics NV & Ors (High Court)

The High Court has refused an application for an interim injunction that alleged that a campaign of European customs seizures and other enforcement measures by the owners of various patents for MP3 compression technology amounted to anti-competitive behaviour and an abuse of a dominant position. The High Court declined jurisdiction on the basis that no harm had or would be suffered in the UK, and that the claimant did not have a good arguable case.

The case demonstrates the legitimate use of customs seizure powers as part of a wider patent dispute, as well as setting out useful guidance on the application of the jurisdictional regime of the Brussels Regulation for matters of IP infringement. Finally, the Court considered in what circumstances the enforcement of patent rights might be considered an abuse.

For the full judgment in this case, click here.