IP Snapshot - October 2015

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

　
COPYRIGHT

Phonographic Performance Ltd v Fletcher [2015] EWHC 2562 (CH), 22 June 2015

The High Court sentenced the defendant in the case to a suspended sentence of 28 days’ imprisonment for playing records without a licence in breach of an injunction. The court took into account various mitigating factors when handing down this sentence.

The claimant had previously obtained a court order prohibiting the defendant, a nightclub owner, from playing, or authorising the playing of, records that were within the claimant’s repertoire. The defendant was then found by the claimant to be playing records that were in its repertoire so the claimant applied for commital of the defendant for breach of the court order.

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

　
TRADE MARKS AND PASSING OFF

Société Des Produits Nestlé SA v Cadbury UK Ltd, C-215/14, 16 September 2015

The CJEU has provided its judgment in this case concerning Nestlé’s application for a UK trade mark for the shape of a Kit Kat. The judgment is of great significance for shape marks generally, providing guidance on the interpretation of Article 3(1)(e). The CJEU has ruled that one of the absolute grounds for refusal contained in Article 3(1)(e) needs to apply fully for the trade mark application to be refused and has further concluded that manufacturing considerations are not relevant in the assessment under Article 3(1)(e).

The CJEU has also provided further guidance on the test to be satisfied in order to demonstrate acquired distinctiveness. The court held that to demonstrate acquired distinctiveness, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.

The case shall now return to the UK High Court for the CJEU’s guidance to be applied to the present facts.

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

Tilda Riceland Private Ltd v OHIM, T‑136/14, 30 September 2015

The EU General Court has annulled an opposition decision of the Board of Appeal of OHIM based on the UK law of extended passing off. Extended passing off can be used to protect goodwill in a name distinctive of a class of goods where that goodwill is shared between a number of traders.

Tilda Riceland Private Ltd opposed an application for a Community Trade Mark (CTM) relying on the earlier (unregistered) sign "BASMATI", used by Tilda and other traders. The Court confirmed that Article 8(4) of the Trade Mark Regulation could be applied to signs which were used by a number of traders. In order to be classified as a distinctive element relevant to Article 8(4), the sign did not necessarily have to indicate the commercial origin of the goods in relation to which it was used (which would eliminate signs used by more than one trader). Identifying geographical origin or special qualities or characteristics were also valid functions.

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

　
CTM OPPOSITIONS

Alexandra Dellmeier v OHIM, Case T-641/14, 24 September 2015

The EU General Court has dismissed an appeal of a decision of the OHIM Board of Appeal that the Community word mark applied for "LEXDELL" would have a likelihood of confusion with the existing mark "DELL".

On a visual comparison, there was a certain degree of similarity. The mark applied for differed in having the word ‘lex’ at the beginning. This assessment is valid even if the relevant public attributes a meaning to the word ‘lex’, which would generally be understood to mean ‘law’ or ‘legal’. The Court also found that there was a low degree of phonetic similarity between the marks.

Further, the Court found that the applied for mark would take unfair advantage of the earlier mark. It noted that there was a degree of closeness between legal services in respect of intellectual property and the technology which forms the subject-matter of the intellectual property for which Dell is known.

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

Reiner Appelrath-Cüpper Nachf. GmbH v OHIM, Case T-60/13, 23 September 2015

The EU General Court has annulled a decision of the OHIM Board of Appeal, in the process finding that there was no likelihood of confusion between the mark applied for, "AC", and various earlier marks that consisted of the letters "A" and "C" along with the words "ANN CHRISTINE" in various arrangements.

The goods in most of the classes covered by the applied for mark are identical to those covered by the earlier marks. While there are some differences in one class, some of the goods covered by this class are still identical between the two marks.

The Court found that there is only a low degree of visual similarity between the marks. The impression given by the mark applied for is that of a typographical construction, whereas the earlier marks appear to be more of a geometric construction.

Further, the Court held that the mark applied for is composed of the sole word element ‘ac’. The earlier marks are likely to be pronounced by the relevant public as the full name of the brand.

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

Bankia, SA v OHIM, Case T-323/14, 17 September 2015

The EU General Court has dismissed in part a finding of the OHIM Board of Appeal. This appeal concerned an application to register a figurative mark involving the word "BANKIA", which was opposed by the proprietor of the word mark "BANKY".

The Court found that there was visual, phonetic and conceptual similarity between the marks. However, the Court held that there is no similarity between the services in question. The Board of Appeal erred in finding that there is similarity between the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ in Class 36 covered by the earlier mark.

On this basis, the Court held that the contested decision must be annulled to the extent that it upheld the appeal in respect of ‘real estate services’ would be similar to ‘financial and banking services’. The remainder of the action was dismissed.

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

　
DESIGNS

Tech 21 UK Ltd v Logitech Europe S.A., High Court, 15 September 2015

The High Court has found that while it had jurisdiction to make a declaration concerning a threat of infringement proceedings under the UK legislation on unjustified threats, it did not have jurisdiction to make declarations of non-infringement of Community or UK unregistered design rights. The correct jurisdiction in relation to a declaration of non-infringement of Community unregistered design rights was the Netherlands or Croatia, where the defendant was based. In relation to the defendant's UK unregistered design right, it was not proven that such right existed.

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

H&M Hennes and Mauritz v OHIM, Cases T 525/13 and T 526/13, 10 September 2015

The EU General Court has upheld two related decisions of the OHIM Board of Appeal, finding that two registered designs concerning handbags would have different overall impressions on the informed user compared to an earlier registered design. The Court took into account the fact that the earlier designs had a more "worked" appearance, involving a decorative motif, whereas the contested designs were characterised by classic lines and a formal simplicity. The Court did note certain similarities between the bags but considered that these were insignificant when compared with the differences.

For the full texts of the decisions, please click here and here.