Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2011] EWCA Civ 618, 24 May 2011
The Court of Appeal has reversed a judgment handed down by the
High Court last year regarding the provisions governing unlawful
threats of trade mark infringement proceedings in the UK. The Court
considered that the trial judge had failed to consider the relevant
letter as a whole and had focused too greatly on the final three
paragraphs, such that the conclusion of the High Court that the
letter qualified as without prejudice communication was erroneous.
The case provides interesting guidance as to how a threat should be
interpreted, and the extent to which a threat may benefit from
"without prejudice" protection.
For our Law Now of the decision,
click here
Longevity Health Products Inc v OHIM, General Court, 24 May 2011
The General Court has determined that a CTM application brought
by Longevity Health Products Inc, for the word mark E-PLEX applied
in respect of various goods in class 5 including pharmaceutical and
veterinary preparations, should not be registered due to a
likelihood of confusion with an earlier Portuguese registered trade
mark for EPILEX for "anti-epileptics" in class 5.
For the full text of the decision, click
here
Jean Christian Perfumes and another v Sanjay Thakrar, High Court, [2011] EWHC 1383 (Ch), 27 May 2011
The High Court has held that an oral licensee of a Community
trade mark has locus to sue for infringement (in contrast to the
position for UK trade marks, licences of which must be in writing)
and that oral use of a Community trade mark can constitute
infringement.
For the full text of the decision, click
here
Group Lotus plc and another v 1Malaysia Racing Team SDN BHD and others [2011] EWHC 1366 (Ch), 27 May 2011
The High Court has determined that there was no trade mark
infringement or passing off in respect of various claims and
counterclaims related to the word Lotus used in the context of
Formula 1 racing. The Claimants, Group Lotus Plc and Lotus Cars
Ltd, the manufacturers of Lotus cars, brought various actions
(including breach of contract) against a number of Defendants, all
associated with the Team Lotus Formula 1 racing team.
Both parties were held to have separate goodwill in related fields
– that of the manufacture and sale of sports cars, and
the manufacture of racing cars. As such both parties were permitted
to race in the F1 season as different teams; the court held that
the nature of their respective businesses and the sophistication of
the relevant consumer meant that there was no likelihood of
confusion.
For the full text of the decision, click
here
Omega SA v Omega Engineering Inc., Court of Appeal,
[2011] EWCA Civ 645, 27 May 2011
The Court of Appeal upheld the High Court's order for
summary judgment in favour of Omega US (engineering) against Omega
Switzerland, the watchmakers, in relation to breach of contract
concerning a trade mark co-existence agreement between the
parties.
For the full text of the decision, click
here
Dame Vivienne Westwood OBE v Anthony Edward Knight
[2011] EWPCC 11, 11 May 2011
For a summary of this case, determined on 22 March 2011, please
refer to our April 2011 IP Snapshot
here. This hearing considered the
reasons behind the costs assessment. It is of particular importance
as it is the first time that the new costs capping provisions in
the Patent Country Court have been applied to nearly the whole of a
case.
Judge Birss noted that limits are set on costs in order to provide
certainty for litigants, so they are able to envision their
exposure to costs in seeking to defend their IP rights; he
confirmed that the applicable stages and scales for a trial on
liability is at Section 25C of the Costs Practice Direction, in
Table A, found at CPR 45.
For the full text of the decision, click
here
PASSING OFF
Redwood Tree Services Limited v Warren Apsey T/A
Redwood Tree Surgeons [2011] EWPCC 014
Redwood Tree Services Ltd, the claimant, succeeded in a passing off
action against a business trading under the name "Redwood Tree
Surgeons". Both parties were small local tree-surgery
businesses, based about ten miles apart. The judge held that the
claimant's tree-surgery business had a small goodwill, highly
localised in the GU, SL and KT postcodes. Judge Birss held that
there was the requisite misrepresentation when the defendant traded
in the claimant's area, although most of the time he did not,
and that this was the kind of case in which damage followed if
misrepresentation was established. Consequently, a claim for
passing off had been made out. Judge Birss considered that he could
not stop the defendant trading under the name "Redwood Tree
Surgeons" within the RG postcode area. The only injunction
which would be appropriate was one specifically limited to the GU,
SL and KT postcodes. This case demonstrates that passing off can be
found between small businesses operating in a highly localised
area.
For the full text of the decision, click
here
COPYRIGHT
CSC Media Group Limited v Video Performance Limited [2011] EWCA Civ 650, 27 May 2011
The Court of Appeal has upheld a decision of the Copyright Tribunal in relation to the royalty rate to be used in a licence for music videos. This judgment overturns a previous decision of Floyd J. CSC Media Group Limited ("CSC"), a broadcaster of seven television music channels, was licensed by Video Performance Limited ("VPL") to broadcast and show certain music videos in public. The terms of the licence (agreed in 2002) provided for the payment to VPL of a pro-rated fee based on the headline rate of 20% of gross revenue. This licence was never signed. The Tribunal rejected this licence as a useful comparator and only considered a licence between VPL and BSkyB agreed in 2004 (the "BSkyB Licence"). The Tribunal decided that the reasonable royalty rate should be 12.5% of CSC's gross revenue subject to certain proposed deductions (for instance advertising). The Court of Appeal upheld this decision to look at the most relevant comparable (in this case the BSkyB Licence) and adjust the royalty rate accordingly.
For the full text of the decision, click here
PATENTS
Musion Systems Ltd v Activ8 -3d Ltd and others [2011] EWPCC 12, 18 May 2011
The Patents County Court, in a preliminary issue on the involvement of certain defendants in the pleaded infringing acts, has considered whether particular company e-mail addresses used in correspondence relating to the alleged infringement could be evidence as to establishing the role in which individual defendants played in the relevant activities and any joint tortfeasor liability. The court held that whether the individuals used a particular e-mail address was a matter which could not bear a great deal of weight but which it would be wrong to ignore.
For the full text of the decision, click here
DESIGNS
Advocate General's Opinion on Case C-281/10 P PepsiCo, Inc., 12 May 2011
Advocate General Mengozzi delivered his opinion on 12 May 2011 in the long-deliberated Case C-281/10 P Pepsico, Inc. The opinion considers designers' degree of freedom in designing goods and provides clarity on the meaning of the "overall impression" made by a design, as set out in Regulation No 6/2002. The Advocate General goes on to define the notional informed user of designs, declaring that it is neither a general consumer nor an expert with specific technical expertise, but someone who sits between the two. The Advocate General also considered the informed user's method of comparing goods, noting that direct comparisons are suitable in some cases. If the European Court of Justice (ECJ) chooses to follow the Advocate General's opinion, owners of designs will have a better understanding of the strength of their design rights thanks to these definitions.
For our Law Now of the decision, click here
Albert Packaging Ltd and others v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, 2 June 2011
This was an action for infringement of unregistered design right (UDR). The Patents County Court found that UDR subsisted in the Claimant's sandwich wrap carton in the assembled form, but not in the two other more generalised ways in which they had defined their design. However, it was found that the Defendant's product did not infringe the UDR. This case demonstrates that two designs can have a number of similarities without there being infringement.
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 www.law-now.com/law-now/mondaq
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 24/06/2011.
