Reported Trade Mark, Design Right and Copyright Cases for August 2004

03 September 2004

Katharine Stephens

Trade Marks


Société des Produits Nestlé S.A. v. Mars UK Ltd (Lord Phillips of Worth Matravers, L.JJ. Mummery & Chadwick; [2004] EWCA (Civ) 1008; 26.7.04)

Nestlé applied to register a black and white photograph of a POLO mint, but without the word POLO embossed on it in Class 30 in respect of sugar confectionary. The Hearing Officer was convinced that acquired distinctiveness related only to the goods being white and of the size of a standard POLO mint. In order to deal with his requirements, Nestlé applied to amend the specification of goods as follows: “white mint flavoured compressed confectionary of the shape shown in the form of application and having an external diameter of approximately 2cm, an internal diameter of approximately 0.8cm and a minimum thickness of approximately 0.4cm”. Lloyd J. [2004] RPC 548 set aside the decision and substituted a decision refusing Nestlé’s application to register the mark. The Court of Appeal, Mummery L.J. giving judgment, dismissed Nestlé’s appeal.

The Court of Appeal held that the power to amend trade mark applications under the 1938 Act had been significantly limited by Section 39 of the 1994 Act. There was no dispute that the restriction of the specification of goods to “mint flavoured compressed confectionary” was permissible under Section 39. However, it was not a sensible and fair reading of the language to restrict the goods to the colour and size of the mark.   It was incorrect to equate the shape of the mark, which distinguished the goods, with the specification of the goods, which was distinguished by the mark.

Section 13 could not be used to circumvent Section 39. The provision in Section 13(1)(b) states that “an applicant … may agree that the rights conferred by the Registration shall be subject to a specified territory or other limitation” and where he does so, the rights on infringement are restricted accordingly.

The Court of Appeal held that, the inclusion of colour and size was not a specified limitation on the rights conferred by registration within the meaning of Section 13(1)(b). Instead, they related to the inclusion of essential ingredients in the content of the mark in order to make it distinctive. An applicant who agreed that the rights conferred by registration should be subject to a limitation was agreeing, in effect, that the use of the mark outside the limitation was not to be treated as an infringement of the mark notwithstanding that such use would, otherwise, fall within Section 10. That, in the opinion of the Court of Appeal, was not at all the same thing as incorporating limitations in the description of the mark itself.

Bad faith

Harrison v. Teton Valley Trading Co(L.JJ. Pill, Arden & Sir William Aldous; [2004] EWCA Civ 1028; 27.7.04)

The applicant applied to register CHINA WHITE in Classes 32 and 33 for beers, non‑alcoholic and alcoholic drinks, including cocktails. Previously Pumfrey J. had dismissed the appeal from the decision of the Registrar who, on opposition, had refused the application under Section 3(6). The Court of Appeal, Sir William Aldous giving judgment, dismissed the appeal.

The applicant had been approached by the bar manager of the opponent, who with others, had developed a signature cocktail called CHINA WHITE for the opponent’s nightclub of the same name. From what he was told, the applicant believed that the drink and the name were under the sole proprietorship of the bar manager. The Court of Appeal held that, nevertheless, bad faith had been established as a result of all the facts and because the applicant had made no further enquiries.

In so holding, the Court of Appeal applied the “combined test” set out by the House of Lords in Twinsectra Ltd v. Yardley [2002] 2 AC 164:

“There is a standard which combines an objective test and a subjective test, and which requires that before there can be a finding of dishonesty it must be established that the defendant’s conduct was dishonest by the ordinary standards of reasonable and honest people and that he himself realized that by those standards his conduct was dishonest.”

The words “bad faith” suggested a mental state. For this reason, the Court of Appeal warned that care should be taken when applying the reasoning of Mr Hobbs QC acting as the appointed person in Daawat Trade Mark [2003] RPC 187. The Court of Appeal also considered decisions of the First Cancellation Division of OHIM which appeared consistent with the test in Twinsectra.

Trade mark use

R. v. Isaac(Pill L.J., Judge Poole & Sir Charles Mantell; CA (Crim Div); 22.4.04)

The conviction on two counts of selling goods bearing a sign identical to a registered trade mark contrary to Section 92(1)(b) was quashed. Counsels’ agreed note on the use of the sign in the course of trade was insufficiently clear. Following R. v. Johnstone [2003] 2 Cr App R 33, “the jury must be directed that a criminal offence is committed only when, as a first element, the offending sign is used as an indication of trade origin, as explained in Johnstone”.

Descriptive signs 

(1) Vitaly Lissotschenko, (2) Joachim Hentze v. OHIM* (CFI (First Chamber)
T- 311/02; 20.7.04) (Decision not yet available in English)

The CFI dismissed the action for the annulment of the decision of OHIM’s Board of Appeal refusing registration of the word mark LIMO as a CTM in respect of goods in Classes 9 and 10.  

The applicants applied for registration of the word mark LIMO in classes 9, 10 and 11 for amongst other things lasers for both medical and non medical purposes, and lightning apparatus and installations. The examiner refused registration on the ground that the sign was descriptive and non distinctive. The applicants appealed and the Board of Appeal upheld the examiner’s refusal in respect of Classes 9 and 10 but allowed it in respect of Class 11. The Board of Appeal held that LIMO was descriptive of the goods in question on the basis that LIMOS was the well known abbreviation of “Laser Intensity Modulation System” and that therefore it was descriptive of one of the possible uses of the goods in question. The BoA also held that the removal of the “S” from the well known abbreviation did not reduce the descriptive character of the term LIMOS and that therefore the specialist consumer would still be able to establish a sufficiently clear and direct link between the sign LIMO and the products in Classes 9 and 10. The specialist consumer may perceive the sign as an abbreviation of “Laser Intensity Modulation” which would still refer to one of the possible uses of those products.

No likelihood of confusion

Vedial SA v. OHIM* (Opinion of A.G. Ruiz-Jarabo Colomer; C‑106/03P; 15.7.04) (Opinion not yet available in English)

A.G. Ruiz-Jarabo Colomer recommended to the ECJ that the appeal against the decision of the CFI was dismissed on the basis that all the arguments submitted by the appellants were not relevant and that there does not exist likelihood of confusion between the signs in question. Although the A.G. discussed the issues, this was the only clear point to come out of his opinion.

The case involved the signs HUBERT and SAINT- HUBERT 41. France Distribution applied to register a CTM for HUBERT, combination mark (word element and device) for products in Classes 29, 30 and 42 for various foodstuffs and catering services. Vedial SA opposed the application on the basis of their earlier French registration for SAINT HUBERT 41 for some of the products for which registration was sought, in particular milk and dairy products (Class 29) and vinegar and sauces (Class 30). The opposition was rejected. OHIM’s Opposition Division found that there was no likelihood of confusion as to the origin of the goods in question by the French public within the meaning of Article 8(1)(b). Claiming that the fact that its mark was well known in France should be taken into account when assessing the likelihood of confusion, Vedial appealed the decision to the Board of Appeal. In turn the BoA rejected the appeal and upheld the decision of the Opposition Division on the basis that although the goods were similar there were not strong similarities between the marks. Undeterred, Vedial decided to bring an action before the CFI against the BoA’s decision. The CFI dismissed the action, finding that there was no likelihood of confusion between the marks in question. Vedial then appealed that decision to the ECJ.    

Passing off 

I N Newmans Ltd v. Richard T Adlem (David Young Q.C. sitting as a Deputy Judge; [2004] EWHC 1563(Ch); 28.7.04) 

The Judge held that the name “Richard T. Adlem Funeral Director” in connection with a funeral services business at the relevant time did not exclusively relate to either the claimant or the defendant. Therefore there could be no passing-off and both parties were entitled to use the name in connection with such a business. However, the parties should be careful to use the name in a way which was not misleading so that the public would not confuse the two businesses or believe that there was only one business named “Richard T. Adlem Funeral Directors”.

Furthermore, as there was no passing-off the defendant’s registered trade mark for “Richard T. Adlem Funeral Directors” was not invalid under Section 5(4). However, the claimant was entitled to a declaration of non-infringement under Section 11(3). They had an earlier right to the name which would be enforceable against third parties by virtue of being successors in title to the name Richard T. Adlem as a consequence of the purchase of the goodwill in the defendant’s funeral services business in 1993.

Labelling and advertising claims

Douwe Egberts NV v. Westron Pharma NV& Ors* (ECJ; C-239/02; 15.7.04)

Douwe Egberts brought proceedings against the defendants for selling DynaSvelte Café claiming that certain statements on the jar promoting the product as a breakthrough in weight control infringed Belgian national legislative provisions governing the advertising and labelling of foodstuffs. The Belgian Court referred various questions to the ECJ.

Firstly, the ECJ held that Article 2 of Directive 1999/4/EC relating to coffee extracts and chicory extracts did not preclude the use of trade names or other names under which coffee products were sold. 

The Court then turned to the next set of questions which essentially asked whether Articles 28 EC and 30 EC on the free movement of goods as well as Articles 18(1) and (2) of Directive 2000/13/EC on the approximation of laws relating to the labelling, presentation and advertising of foodstuffs precluded national legislation which prohibited references to “slimming” and to “medical recommendations, attestations, declarations or statements of approval” in the labelling and advertising of foodstuffs. Directive 2000/13 provides, inter alia, that labelling must not be such as could mislead the purchaser to a material degree, particularly as to characteristics of foodstuffs. Article 18 provides that:

1. Member States may not forbid trade in foodstuffs which comply with the rules laid down in this Directive by the application of non‑harmonized national provisions governing the labelling and presentation of certain foodstuffs or of foodstuffs in general.

2. Paragraph 1 shall not apply to harmonised national provisions justified on grounds of:

  • protection of public health;

  • prevention of fraud …;

  • protection of industrial and commercial property rights …”

In consequence, because the national provisions formed an absolute prohibition on the labelling of foodstuffs relating to slimming or medical recommendations without an examination on a case-by-case basis of whether they were in fact apt to mislead the buyer, such measures exceeded Article 18(1) of Directive 2000/13. Further, such provisions exceeded what was necessary in order to obtain the objective of protecting consumers against fraud etc. and could not be justified under Article 18(2). 

The Court considered the question of advertising foodstuffs separately. However, for the same reasons as given above, the absolute prohibition on references to “slimming” and “medical recommendations, attestations, declarations or statements of approval” in advertising constituted provisions not harmonized by Directive 2000/13. Furthermore, they constituted a fetter on intra‑Community trade coming within the scope of Article 28 EC. 

Design Right 

Colour ways 

Lambretta Clothing Company Ltd v. Teddy Smith (UK) Ltd & Anr (L.JJ. Sedley, Mance & Jacob; [2004] EWCA (Civ) 886; 15.7.04)

In the High Court below Etherton J. [2003] RPC 41 had held as a matter of law that the UK national unregistered design right (UDR) could not subsist in the design for a “retro-vintage” 60s/70s style track suit top, in particular in the colour ways chosen for the design (blue for the body, red for the arms and white for the zip and stripes on the sleeves, together with the size and positioning of the Lambretta logo, small on the front and large on the back). 

Etherton J. also held that there was a defence under Section 51 of the CDPA to the claim of infringement of artistic copyright. Lambretta appealed against these findings of law but only in relation to the first defendant, given that the Judge had found that the Teddy Smith track top had been copied but that Next (the second defendant) had not copied Lambretta’s design. Accordingly, Next was not a party to the appeal.

The Court of Appeal dismissed Lambretta’s appeal. The main judgment was given by Jacob L.J., with a dissenting judgment by Mance L.J. in respect of the Section 51 issue.

The Court of Appeal agreed with the first instance Judge that the selection of colour ways for a pre-existing design of track top did not constitute “shape or configuration (whether internal or external) of the whole or part of an article” and accordingly the design did not qualify as a UK UDR. Jacob L.J. drew a distinction between “shape and configuration” on the one hand and “pattern and ornament” on the other. He concluded that the meaning of “shape or configuration” in relation to registered designs must be the same as for the UDR and his review of the registered design cases led him to conclude that “for over a century no-one has ever held that merely colouring an article in a novel way amounts to “shape or configuration””.

Jacob L.J. did not perceive the distinction as between two and three dimensional objects. He said “there is no reason why a “design” should not subsist in what people would ordinarily call a “flat” or “two-dimensional” thing – for instance a new design of doily would have a new “shape” and could in principle have UDR in it”. However, in this particular case he did not accept Lambretta’s submission that words “configuration … of an article or part of an article could cover the mere colouration of parts of an article, in the sense that the red, blue and white components of the Lambretta top were “configured together”. While it was true that the components were configured to produce the ultimate complete article, their colour had nothing to do with that configuration. Even if a wide meaning of configuration as “the relative arrangement of parts or elements” were taken, that would not be wide enough to cover merely colouring a pre-existing article.

Jacob L.J. went on to find that the exclusion of “surface decoration” from the scope of the UDR must also cover this case. While he accepted that parts of the garment were dyed right through, he thought that “any realistic and practical construction of the words “surface decoration” must cover both the case where a surface is covered with a thin layer and cases where the decoration, like that in Brighton rock, runs through the article”. Otherwise whether or not the UDR could subsist in two different articles, having exactly the same outward appearance, would depend on how deep the colours went; Parliament could not have intended anything so capricious.

In considering the question whether the design was “commonplace in the design field in question” Etherton J. had erred in narrowing down “design field” to casual wear as opposed to sportswear. Jacob L.J. said that a “reasonably broad approach” was called for: in this case a tracksuit designer trying to produce a “sporty” image would look at actual sportswear. Jacob L.J. cited with approval Scholes Windows v. Magnet [2002] FSR 172 where the design field was “window design”, not U-PVC casement windows, casement windows, or U-PVC windows.   

Having found that the UK UDR could not subsist in the design of the Lambretta top, Jacob L.J. went onto consider whether, supposing Lambretta would otherwise have a cause of action in artistic copyright, Section 51 would operate as a bar to that action. Section 51 reads, so far as is material;

(1) it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a type-face to make an article to the design or to copy an article made to the design”. 

Section 51(3) provides that “design” means “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration”. 

Lambretta argued that if the UDR did not subsist in their track suit top then they must have rights in artistic copyright since otherwise there would be a gap or hole between copyright and design right which were intended to be mutually exclusive. Jacob L.J. rejected that approach and agreed with Etherton J. that Lambretta’s garment did not qualify for protection under either the UDR or under artistic copyright. The fact that “surface decoration” was excluded from the definition of “design” for the purpose of Section 51 did not make any difference. The colour ways were not just colours in the abstract; they were colours applied to shapes and could not physically or conceptually exist apart from the shapes of the parts of the article. He said “it is not as though this surface decoration could subsist on other substrates in the same way as, for instance, a picture or logo could”. Accordingly, if artistic copyright were to be enforced, it could only be enforced in respect of the whole design drawing and that was not allowed by Section 51. The surface decoration, i.e. the colours, had become part of the shapes of the top and could not be considered separately; therefore Section 51 excluded the whole of the design from copyright protection. 

Mance L.J. however dissented on this interpretation of Section 51. He thought that copyright in a drawing showing an article with surface decoration might still be infringed if (putting aside any copying of the design of the shape or configuration of the article) there has, by virtue of the copying of the surface decoration, been copying of a substantial part of the drawing.  He did not see any basis for limiting the copyright protection in the case of surface decoration to a situation where the surface decoration could be said itself to constitute a separate drawing. 

The third appeal judge L.J. Sedley agreed with Jacob L.J. on this point.

The case highlights, and indeed Jacob L.J. himself observed, that the new Community unregistered design right, although lasting for a shorter period than the UK’s unregistered design right, would clearly cover this case because of the wider definition of “design” contained in Article 3(a) of Regulation 6/2002, namely:

Design … means “the appearance of the whole or a part of the product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” (emphasis added).

Thus the new Community unregistered design right does not exclude surface decoration and specifically includes features such as colours.

Multi-component designs

Ultraframe (UK) Ltd v. Eurocell Building Plastics Ltd & Anr (Lewison J.; [2004] 1785 EWHC (Ch); 22.7.04)

This case involved allegations both of design right infringement (as discussed here) and infringement of a patent (as discussed above in the note by Alan White).

Ultraframe claimed that the defendant’s conservatory design, Pinnacle 500, infringed the design right in its Ultralite 500 design considered as the whole and in various elements of the design. Lewison J. held that Pinnacle 500 infringed the assembly as a whole and the panels, taken as a whole. However, other elements were not infringed when viewed individually.

In coming to this conclusion, Lewison J. first had to consider what was the design. He noted that Laddie J. in Ultraframe UK Ltd v. Fielding [2003] RPC 435 at 457 stated that those aspects of the design of an article falling within the “must fit” and “must match” exclusions had first to be excluded. Thereafter, if the combination of features left over was commonplace, the design would not be protected. Lewison J. had some reservations as to whether this was the correct approach. He thought that it was better to consider whether the design was commonplace before subtracting from it any features that fall within these two exceptions.

Lewison J. also considered the question of what was the article. Lewison J. followed the decision of David Young QC in Baby Dan AS v. Brevi SRL [1999] FSR 377 in that when considering a design as a whole, the “must fit” exclusion did not exclude from design right the shape or configuration of the various parts necessary to enable those parts to be assembled into a larger product. (This decision conflicts with Laddie J.’s earlier decision in Electronic Techniques (Anglia) Ltd v. Critchley Components Ltd [1997] FSR 410 and therefore the defendants reserved the right to argue in the Court of Appeal, that Laddie J. was correct.)

Lewison J. held that the Ultralite 500 design, when considered as a whole, was not commonplace in the design field, which was limited to conservatory roofs. Furthermore, the differences between the two designs would have been imperceptible to the eye of the person at whom the design was directed, whether that person was a householder or builder.

In relation to the panels themselves, although some of the features were commonplace, the combination was not. Lewison J. held that the design of the Pinnacle 500 panel had been copied from the Ultralite 500 panel. Some changes had been made, but the defendant had made articles substantially to the Ultralite 500 design. 

Finally, in relation to the top caps and end caps, Lewison J. held there was no infringement. He did not think that this decision was inconsistent with his conclusion on infringement of the assembly as a whole. It depended on the level of generality at which the design was described. What amounted to reproduction of an assembly in substantially the same form as that of a previous assembly might not be the reproduction of an individual part. In this respect, he stressed the importance of the pleading in defining those aspects of the design that were said to have been reproduced.


Circumvention devices

Kabushiki Kaisha Sony Computer Entertainment Inc & Ors v Ball & Ors(Laddie J.; [2004] EWHC 1738 (Ch); 19.7.04)

This case concerned an electronic chip called Messiah 2 which can be fitted to Playstation 2 (“PS2”) consoles to “trick” the console into playing unauthorised copies of games and PS2 games from non-PAL regions which do not contain codes which Sony embeds in the consoles and games. Without the chip, unauthorised copies cannot be played because the embedded codes cannot be copied. Sony applied for summary judgment against the first defendant on the ground that he had breached its rights both under Section 296 of the CDPA prior to 31 October 2003 and Sections 296, 296ZA, ZD and ZF of the Act as amended on 31 October 2003 by being involved in the design, manufacture, sale and installation of the Messiah 2 chip. 

1. Section 296 prior to 31 October 2003

 It was not disputed that the PS2 security system was a copy-protection means and that Messiah 2 was a device specifically designed or adapted to circumvent it or that Mr Ball dealt with the chip and knew what it was intended to do. However, it was argued that Mr Ball could not be said to have the requisite knowledge for the purposes of Section 296 that the device would be used to make “infringing copies” on two grounds.

Firstly, it was argued that the infringing copy created by use of the Messiah 2 had to be an article (Section 27 concerning the meaning of “infringing copy” refers to “an article”) - there was no article in this case because the copy created when the game was copied into the RAM chip in the console to be read only existed for a fraction of a second. Laddie J. rejected this, holding that the RAM chip containing the copy was an infringing article, even if it only retained the infringing copy for a short time.

Secondly, it was argued that copies made using the Messiah 2 would only be infringing if the copying took place in the UK or if they were imported into the UK. Laddie J. accepted that infringement of UK copyright was required for an infringing copy to be created (Section 27(2)). Noting that Section 296 did not, in any event, prohibit export of the devices for circumventing copyright protection he found that Mr Ball only breached the provisions where he sold chips in the UK or, in relation to advertising, manufacturing and having chips in his possession, where he knew or had reason to believe the relevant chips were for supply to a UK consumer. Publication of information relating to the Messiah 2 chips to British users of the chips on internet sites would also amount to an infringement. 

2. The application of the Act as amended

(a) Section 296 – computer programs

Laddie J. found that the same points on the meaning of “infringing copies” and the extent to which commercial activities servicing the non-UK market were infringing applied. 

Laddie J. rejected arguments that Section 296 would not apply because it was not the “sole intended purpose” of the Messiah 2 chip to circumvent copyright protection because it could also be used to make back up copies or allow other region games to be played. The making of back up copies and use of games from non-PAL regions would have to be licensed by Sony. Laddie J. also rejected an argument that because games intended for the UK market were labelled “for home use only”, the chip could legitimately be used to allow games purchased in the UK to be used on imported PS2 consoles because, even if this was one purpose of the chip, there was clear labelling on the games to indicate that PAL games should only be used on consoles displaying the PAL logo. 

(b) Other copyright works

Dealing with Section 296ZA, Laddie J. found this applied where Mr Ball had himself installed Messiah 2 chips and used the console so modified.

Laddie J. commented that Section 296ZD created a tort of strict liability because knowledge or reason to believe that the device would be used to make infringing copies is not a criterion. Despite the wider scope of the provision Laddie J. considered that Section 296ZD should not be read as meaning the section covered circumvention devices which were to be used outside the jurisdiction. However, he found that Mr Ball infringed Section 296ZD(1)(b)(i) by distributing, offering, exposing, advertising for sale and having in his possession for commercial purposes a product which was promoted for the purpose of circumvention of a technological measure to customers in the UK. 

The defendant argued that the Sony copy protection system could not be covered by the legislation because it was applied primarily in the hardware, not the software and Section 296ZD operated where the relevant measures have been “applied to a copyright work”. Laddie J. rejected this argument. There was nothing in the scope of the definition of “technical device” or “technological measure” which limited where the device should be. What counted was that there is copy protection, not where it was. 

Assignment of foreign copyrights

R Griggs Group Ltd & Ors v. Ross Evans & Ors(Mr Prescott QC, sitting as a Deputy Judge; [2004] EWHC 1088 (Ch); 12.5.04)

Mr Prescott had previously held that the claimants, manufacturers of Dr Martens boots, were entitled to a declaration that they were the beneficial owners of all aspects of copyright in a logo created by the defendants ([2004] CIPA 40). The question now arising related to the Court’s equitable jurisdiction. The Deputy Judge described the bare bones of the problem as follows:

“By a contract governed by English law, an author is paid to create a work on implied terms that the copyright in every country of the world shall belong to X. The author does create the work but, instead of assigning the copyrights to X, he assigns them to Y. Y has notice of the prior contract: in other words he cannot say “I was a purchaser for value without notice”. In such a case it is trite law that the Court can order Y to assign the British copyright to X. Does the Court have the power to order the equivalent foreign copyrights to be likewise assigned? The answer may seem intuitively obvious, but not when you have read some of the case law”.

 In a long and complex judgment, the Deputy Judge held that the answer to his question was yes. Consequently, he ordered that the second defendant assign the foreign copyrights to the claimant.

In so holding he considered the reasoning behind the doctrine of the purchaser without notice. In the eyes of equity, a purchaser with notice of a prior title was guilty of unconscionable behaviour. This set up an obligation between the first and second purchaser which the Courts would enforce through an order for specific performance. This later developed into the doctrine of constructive notice. Further, this was not a parochial rule peculiar to English law.

The Deputy Judge then considered the question of whether, in making an order over foreign copyrights following the English doctrine of notice, would this be a breach of comity i.e. would the English courts consider it a judicial invasion of foreign sovereign States? It was established law that the court has no power to make orders affecting the ownership of land (an action in rem) (the rule in Moçambique) except where the defendant has assumed a personal obligation to transfer the property to the claimant (an action in personam). The Deputy Judge held that where the defendant had actual notice of the claimant’s prior title (and therefore was considered to have behaved unconscionably), the claimant could invoke the in personam jurisdiction of the court unless the law of the State where the land was situate provided otherwise e.g. where there was a registration scheme which would extinguish the prior claim. In so holding, he distinguished Deschamps v. Miller [1908] 1 Ch 856 on the basis of modern doctrines of private international law. Thus, even if the issue had been one of land, Griggs, the claimant, would have succeeded.

That would have been sufficient to dispose of the case. However, the Deputy Judge went on to consider the position if he were wrong and, in relation to land, a personal obligation did not arise when it came to the purchaser with notice (unlike other species of equitable fraud). He held that there was a distinction between land and intellectual property. He therefore concluded:

In my judgment, prima facie it is not a breach of comity today, if ever it was, to adjudicate in personam on rights to foreign intellectual property arising out of a contract, even as against a third party purchaser with actual notice thereof, or sufficient notice to cause an honest man to make better enquiries or else stop his hand. This is especially so where the contract is governed by English law and the rights exist in manifold jurisdictions. Absent some special rule in any particular jurisdiction which serves to extinguish the English equity (and in a non‑registration system, such as applies to copyright, it is not easy to imagine one) such a claim, if otherwise well founded, ought to succeed.

Reporter’s note: I am most grateful to my colleagues at Bird & Bird for helping me with this month’s report: Audrey Horton(Lambretta), Jacqui Irvine (Kabushiki), Cristina Garrigues (the two appeals from OHIM) and Clare Wilson(I N Newmans).

The ECJ decisions reported this month can be found at