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The CJEU held that, in order to assess whether a Community trade mark has been put to genuine use in the Community, thus avoiding sanctions provided for in Regulation 207/2009 and maintaining the exclusive right, territorial borders of the Member States should be disregarded. In particular, it cannot be taken for granted that use in one Member State is sufficient to have genuine use in the Community, the most accepted interpretation. However, it cannot be excluded that, in certain circumstances, the territorial scope of a Community trade mark is limited to the territory of a single Member State.
Giving summary judgment, Mr Justice Arnold ruled that a registered trade mark owner had no prospects of defending a counterclaim that, on its face, a trade mark registration comprising a tile was invalid.
At the beginning of 2013 the US Court of Appeals for the First Circuit delivered its decision in a case concerning alleged copyright infringement in a photograph by a Sony TV film, and held that what this had reproduced was just the non-protectable elements in the plaintiff's work.
The High Court for England and Wales accepts jurisdiction to rule on non-infringement of non-UK designations of European patents.
Access to goods or services by the relevant public simply through internet use is insufficient to demonstrate distinctiveness, inherent or acquired, of a word mark which is also a domain name.
In a rare decision on official marks, a court has held that it was reasonable for the Registrar of Trade-marks to hold that a newsletter which contained the Electrical Safety Authority's official mark ‘DIG SAFE’ was sufficient evidence of ‘adoption and use’.
Irish Patents Office substantially revokes specification for registration which exceeded demonstrable use of the mark
The Irish Patent Office has significantly restricted Danone's registration of its well-known ACTIVIA mark on the basis that the variety of products for which the mark was used mostly related to yoghurt and not the wide variety of products in its specification.
A court has found a device mark ‘NOW’ invalid, held that if it was valid it would have had ‘eggshell’ distinctiveness and so would not have been infringed, and found that no protectable goodwill arose from visitors to websites which were not directed to the UK.
Though not a signatory to the WIPO Copyright Treaty 1996 (WCT) and WIPO Performances and Phonograms Treaty 1996 (WPPT), India has recently amended its Copyright Act 1957 to protect copyright over digital content by introducing provisions relating to anti-circumvention of technological protection measures and protection of rights management information.
The General Court, reviewing a decision of the OHIM's Board of Appeal on the lack of individual character of a design concerning a thermosyphon for radiators, provides a thorough assessment of the notions of ‘informed user’ and ‘degree of freedom of the designer’, observing that the ‘saturation of the state of the art’ (crowded field) may be relevant to assess the degree of awareness of the informed user.
The Court of Appeal decision on the scope of protection of a Community registered design confirms aspects of the approach established by previous cases, but leaves unresolved issues concerning the significance of the ‘design corpus’ and unanswered questions about product features not claimed as part of the design.
In the dispute between Samsung and Apple concerning tablet computers, a publicity order has been granted for the first time in the UK in an intellectual property case, ordering the unsuccessful party to publish the judgment of the court, and, in the light of Apple's subsequent conduct, the Court of Appeal has issued a further judgment which clarifies how a party must comply with such an order.
In this preliminary ruling, the court clarifies that the provisions of Directive 2004/48, interpreted in light of the TRIPS Agreement and the Paris Convention, concern only the enforcement and infringement of intellectual property rights and cannot be applied to an invalidation procedure established by an EU Member State in relation to a utility model.
Arnaud Folliard-Monguiral works in International Cooperation and Legal Affairs, OHIM, Alicante. David Rogers is a member of the Boards of Appeal, European Patent Office, Munich.
The purpose of this article is to give a quick overview of the most significant trade mark cases decided in 2012 by the Court of Justice of the European Union (CJEU) and the General Court (GC).
The cases discussed concern the application of Council Regulation 207/2009 of 26 February 2009 on the Community trade mark (which replaced Regulation 40/94 of 20 December 1993) (CTMR), Commission Regulation 2868/95 implementing the CTMR (CTMIR), and Directive 2008/95 of 22 October 2008 to approximate the laws of the Member States relating to trade marks (which replaced Directive 89/104) (‘the Trade Mark Directive’).
The article has a practical bias and is aimed at readers who wish rapidly to find the key decisions of 2012.
There are signs everywhere around us. The science, which studies signs and sign processes is called semiotics.
The sign is a sensually perceived object, which represents another object and bears information for perception of that object. It represents not itself, but something else, another object, located out of it.
If we accept that the most important characterizing thing in the definition of a sign is that the sign "stands for something else" and that "something else" is goods or a service then the name of the thing is a ...TRADE MARK.
Dr Eleonora Rosati is an Italian-qualified lawyer (avvocato) and researcher at the European University Institute (Florence, Italy) where she has been recently awarded a PhD in copyright law. Eleonora, who has worked for Bird&Bird LLP both in Milan and London, is also part of The 1709 Blog and The IPKat blogging teams, for which she reports and comments on IP-related news from all over the world.
Directive 2012/28 on certain permitted uses of orphan works was adopted at the end of October 2012. The directive intends to provide a legal framework to facilitate the digitisation and dissemination of orphan works, these being works and other subject-matter which are protected by copyright or related rights and for which no right holder is identified or for which the right holder, even if identified, is not located.
The adoption of this directive was justified in light of insufficient action at the sole level of Member States and was meant to enhance EU competitiveness, while contributing also to the realisation of key actions of the Digital Agenda for Europe.
It is submitted that none of these underlying objectives has been fully achieved by the directive, which contains numerous notions with an obscure meaning. As a result, Member States have been left with the difficult task of adopting implementing legislations. These have the potential to differ greatly at national level. The article concludes by arguing that, also in the case of orphan works, as has happened elsewhere, the Court of Justice of the European Union (CJEU) will have to fill in many of the blanks left by EU legislation.
Ilanah Simon Fhima is Senior Lecturer and Co-director of the Institute of Brand and Innovation Law, Faculty of Laws, University College London.
Traditionally, trade mark law in the United Kingdom has focused on confusion which occurs at the time of sale. However, in a number of recent decisions, most notably, Och-Ziff, it has been suggested that pre-sale or initial interest confusion may be actionable under registered trade mark law.
Although initial interest confusion has had a recent ‘moment in the limelight’, there is authority to support its recognition dating back at least a decade. However, one of the main obstacles to the recognition of initial interest confusion is identifying the damage involved. This has caused particular difficulties in relation to passing off, which has been the subject of a previous article in this journal (see B. Allgrove & P. O'Byrne, ‘Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?’ (2006) 1 JIPLP 413). The extent to which initial interest confusion can cause damage and whether damage is indeed needed for the confusion element of registered trade mark infringement is considered in this context.
Recognition of initial interest confusion has a number of potential applications in both the online and offline world. However, it is argued that judging the merits of initial interest confusion in isolation is too limiting. Instead, any form of ‘operative confusion’, i.e., which has an effect on how consumers behave, should be actionable.