Reported Trade Mark Cases March 2008

28 March 2008

Katharine Stephens and Zoe Fuller

Decisions of the CFI and ECJ


Ref no. CFI
Sanofi-Aventis S
GD Searle LLC
(Decision not yet in English)
Application (and where applicable, earlier mark) 

- diuretic medicines (5)
 - pharmaceutical products for treating cardio-vascular diseases (5)

(French national registration)


The CFI dismissed the appeal, upholding the BoA’s ruling that there was no likelihood of confusion between the mark applied for and the earlier mark under Article 8(1)(b).

The CFI found that the relevant public consisted of French medical professionals as well as French patients. This relevant public was found to have a higher than average degree of attention given the nature of the products in question.

Despite the fact that the goods covered by the two marks have different principal therapeutic uses (and are therefore not in competition), the goods were held to have some degree of similarity based on their nature, use, consumers, distribution channels and complimentary nature.

Visually, the CFI found that the marks were only faintly similar. Although, they both contain the element “URION”, the “AT” element of the earlier mark is more likely to draw the attention of the public, neutralising the effect produced by the common element of the signs.

Phonetically, the marks were held to be not similar as they only contain the last syllable in common (“u-rion” and “a-tu-rion”). They also start with different sounding vowels and have differing vowel sequences throughout (the letter “u” in the earlier mark is indissociable with the preceding letter so as to form the sound “tu” as opposed to the sound “u” pronounced in the mark applied for).

Conceptually, the marks were found to be different. In the mark applied for, the prefix “uri-” in French links the notion of urology to the goods that it designates. In contrast, the elements “at” and “aturion” of the earlier mark have no such conceptual scope.


Ref no. CFI
Usinor SA v OHIM; Corus UK Ltd.
Application (and where applicable, earlier mark) 


- Steel sheet and strip, steel sheet and strip having a protective coating (6)


- Metals, in particular steel sheets coated with an iron-zinc alloy (6)

(French national registration)


Usinor SA appealed against the decision of the BoA allowing registration of the mark GALVALLOY under Article 8(1)(b) on basis that there was no likelihood of confusion with the GALVALLIA mark. The CFI allowed the appeal.

The CFI refused to admit evidence of acquired distinctiveness of the earlier mark since it had not been put forward by Usinor in the prior proceedings before OHIM.

The identity of the goods covered by the two marks was not disputed. The relevant public was held to be professionals specialising in the French special steels market who pay particular attention to the products.

Visually, the marks were held to be very similar. Phonetically, since the relevant market is highly international and English is commonly used, the CFI compared the marks using both the English and French rules of pronunciation. The marks were phonetically similar using either rule.

Conceptually, the BoA was correct to find that the signs at issue have the prefix, ‘galva’ in common, evoking the technique of galvanisation. However, the BoA incorrectly took the view that a conceptual comparison of the second part of the signs, ‘llia’ and ‘lloy,’ was not possible as these suffixes had no meaning. The CFI held that the relevant public would recognise the word “alloy” within the mark applied for, and would understand the suffix ‘allia’ of the earlier mark as reference to the French word ‘alliage’ meaning ‘alloy’. Therefore conceptually the marks were very similar, both evoking concepts of galvanisation and alloy.

The CFI disagreed with the BoA and held that there was a likelihood of confusion between the two marks, despite the limited distinctiveness of the earlier mark. Even the attentive relevant public could be led to believe that the products in question come from the same or economically-linked undertakings.


Ref no. CFI
Orsay GmbH v OHIM; José Jiménez
Arellano, SA
(Decision not yet in English)
Application (and where applicable, earlier mark) 

- Yarn, woven and knitted fabric  (23)
- Textiles and textile goods; bed and table covers (24)
- Articles of clothing; boots, shoes and slippers; headgear (25)


- Articles of clothing; boots, shoes and slippers, headgear (25)
(Spanish national registration)


The CFI agreed with the BoA and held that there was a likelihood of confusion under Article 8(1)(b) between the marks in relation to goods in class 25.

The CFI found that, visually, there was some similarity between the marks. The dominant element of the earlier mark was the capitalised word “D’ORSAY”; the last five letters being found in the same order in the mark applied for. If the figurative ellipse and six stars of the mark applied for attract any attention, they are not likely to indicate the letter “O”.

The BoA was correct in finding that there was a strong phonetic similarity between the marks. “ORSAY”, the element common to both signs, has the same pronunciation in both marks. The letter “D” in front of the earlier mark only altered the pronunciation slightly. Even if the average consumer did consider the figurative element of the mark applied for to be a representation of the letter “O”, the additional “O” would not be pronounced.

There was no conceptual link between the marks as “Orsay” has no meaning.

The CFI found the products covered by the mark applied for in class 25 were identical to those covered by the earlier mark in that class.


Ref no. CFI
Orsay GmbH v. OHIM; José Jiménez
Arellano, SA
(Decision not yet in English)
Application (and where applicable, earlier mark) 

- Yarn, woven and knitted fabric (23)
- Textiles and textile goods; bed and table covers (24)
- Articles of clothing; boots, shoes and slippers; headgear (25)


- Articles of clothing; boots, shoes and slippers; headgear (25)
(Spanish national registration)


The CFI agreed with the BoA and held that there was a likelihood of confusion under Article 8(1)(b) between the earlier mark and the mark applied for in relation to goods in class 25.

The CFI found that, visually, despite the figurative element of the mark applied for, there was a strong similarity between the marks. The dominant element of the earlier mark was the capitalised word “D’ORSAY” and that of the mark applied for being an oblique ellipse containing eight stars followed by the letters “rsay”. The BoA was correct in finding that this figurative element was clearly read as the letter “O”. Accordingly, the five letters of the competing signs were identical.

The BoA was correct in finding that there was a strong phonetic similarity between the marks. As in the decision T-39/04 (reported above), the presence of the letter “D” in front of the earlier mark only altered the pronunciation slightly and did not sufficiently distinguish the signs.

Conceptually, Spanish internet searches for the term “orsay” did not prove that it had any significance for the Spanish consumer.

The BoA was correct in finding that there was a likelihood of confusion between the marks in relation to products in class 25.


Ref no. 



Citigroup Inc v OHIM; Link Intechange Network Ltd


Application (and where applicable, earlier mark) 


- Financial affairs (36)

- Banking services for the dispensing of cash, funds transfer and payment services, financial information services (36)

(UK national registration)


The CFI upheld the decision of the BoA and concluded that there was a likelihood of confusion between the two marks under Article 8(1)(b).

The CFI held the services at issue to be identical; the services protected by the earlier mark all belong to the category of ‘financial affairs’.

The BoA did not err in finding that the element ‘Link’ was not immediately descriptive of the services covered by the earlier mark. It was, at most, allusive to them. The purpose of the services covered by the earlier mark was to enable the relevant public to manage their financial resources and not to create and maintain connections.

When comparing the two signs, the BoA was correct to conclude that the earlier mark was dominated by the element ‘Link’. The relevant public would break down the mark applied for into two elements, ‘World’ and ‘Link’, both common English words.

Visually and phonetically, the signs were held to be slightly similar. The similarity due to the common element ‘Link’ was weakened by the presence of the ‘World’ element.

Conceptually, the two marks were held to be very similar; the earlier mark meaning ‘link’, the mark applied for meaning ‘global link’.

In the circumstances, the CFI held that there was a likelihood of confusion. The limited intrinsic distinctive character of the earlier mark, though likely to reduce the likelihood, was not such as to preclude it.



Application by an exclusive licensee to suspend expiry of mark

Jurado Hermanos SL v OHIM (CFI; T-410/07 R; 18.02.08) (Decision not yet in English)

 Jurado was the exclusive licensee of the JURADO mark, registered in 1996 for coffee and other products in class 30. The mark expired in 2006 without either the owner or licensee making any request for renewal in the relevant period. Claiming never to have received OHIM’s notice regarding expiry, Jurado asked OHIM to reinstate the mark. OHIM rejected this demand on the basis that Jurado had not in the circumstances shown the necessary vigilance. The BoA upheld that decision but on the basis Jurado had not been expressly authorised by the mark’s owner to either renew the mark or request its reinstatement. Jurado appealed this decision before the CFI. Pending the outcome of that decision, Jurado brought an interim application to suspend the expiry of the mark.

The CFI held the application inadmissible on a number of grounds. The decision, the subject of the application to suspend the expiry of the mark, did not coincide with decision contested in the main proceedings, namely, the BoA’s rejection of the appeal. Even reformulated as a suspension of the effects of the contested decision, Jurado would derive no practical benefit as the suspension would not amount to a positive decision granting Jurado’s request to reinstate the mark. Furthermore, such a suspension would not be in accordance with Article 104 of the CFI’s Rules of Procedure. Jurado had not contested OHIM’s original decision to expire the mark and therefore this decision could not now be the object of a suspension. Jurado also failed to show the application was urgent enough to justify interim measures.

Obligation to protect PDOs

Commission v Germany (ECJ (Grand Chamber); C-132/05; 26.02.08)

The Commission brought an action against the German authorities for failing to give instructions to the government bodies responsible for the combating of fraud to bring an end to the marketing in the German territory of products designated as ‘Parmesan’ which did not comply with the specification for the Protected Designation of Origin (PDO) ‘Parmigiano Reggiano’.

The Federal Republic of Germany (Germany) denied the failure on three grounds.

First, it submitted that a PDO is protected under Article 13 of Regulation 2081/92 only in the exact form in which it is registered. The ECJ rejected this ground and held that whether a constituent part of the PDO could be protected was a matter to be determined by the national court based on the facts presented to it.

Germany further submitted that use of the word ‘Parmesan’ did not infringe the PDO ‘Parmigiano Reggiano’. Under Article 13(1)(b) of the Regulation, PDOs are protected against any misuse, imitation or evocation, even if the true origin of the product is indicated or the protected name is translated. The ECJ held that there was a phonetic and visual similarity between the names ‘Parmesan’ and ‘Parmigiano Reggiano’. There was also a conceptual proximity between the two terms regardless of whether ‘Parmesan’ was an exact translation of ‘Parmigiano Reggiano’.Therefore ‘Parmesan’ must be regarded as an evocation of the PDO. The ECJ also noted that, although the PDOs can become generic, Germany had failed to establish that this was the case for ‘Parmesan’.

Germany finally submitted that it is not bound to proceed of its own motion against infringement of Article 13. The ECJ allowed this ground, holding that the responsibility for monitoring compliance with a PDO lies with the Member State from which the PDO comes (in this case Italy rather than Germany).

The ECJ therefore dismissed the action.

“Use of a trade mark”: search engine displaying sponsored links

Victor Andrew Wilson v Yahoo! UK Ltd and Overture Services Ltd (Morgan J; [2008] EWHC 361 (Ch); 20.02.08)

Morgan J has struck out the claimant’s trade mark infringement claim holding that when Overture matched search terms entered by users to keywords bid on by advertisers in order to display sponsored links, there was no use of a trade mark by the defendants for the purposes of infringement.

The claimant was the proprietor of a CTM for the words “MR SPICY”, registered in respect of certain types of food, sauces and spices and provision of food and drink. He alleged that appearance of sponsored links to third parties’ websites when a user typed “MR SPICY” into Yahoo!’s search engine amounted to infringement of his trade mark by the defendants.

The defendants argued that advertisers whose sponsored links appeared had not purchased “MR SPICY” as a keyword, which would result in their links coming up. Instead, sponsored links appeared due to matching technology which responded to the input of “MR SPICY” by displaying sponsored links to advertisers who had bid on related keywords, such as “SPICY”.  The claimant alleged that this also amounted to trade mark infringement.

The defendants applied for summary judgment or for the claim to be struck out on the basis that they have not used the trade mark or that any use by them did not amount to “trade mark use”.

Morgan J held that the claimant’s case was totally without merit.

The trade mark was not used by anyone other than the user who entered the words “MR SPICY” into the search engine.

The defendants had only responded to the use by the user and this did not amount to use of the trade mark by the defendants. Morgan J held this would even be the case if advertisers had bid on the keyword “MR SPICY”. 

Even if there was use by the defendants, it was use of the English word “spicy” and not “MR SPICY”.

Even if there was use of “MR SPICY” by the defendants, such use was not use “as a trade mark” following the ECJ decision in Arsenal Football Club plc v Reed (C-206/01). Nothing in the advertisements which were coming up could have any adverse impact on the claimant’s rights as proprietor of the mark. The claimant was not able to prohibit use of the words “MR SPICY” if that use could not affect his own interest as proprietor of the mark having regard to its functions.

The claimant did not seek permission to appeal from the Judge. 

Parallel imports: when are goods imported?

Eli Lilly and Company & Lilly Icos LLC v 8PM Chemist Ltd* (Rix & Jacob LJJ and Sir William Aldous; [2008] EWCA Civ 24; 5.02.08)

The Court of Appeal (Jacob LJ giving the main judgment) discharged the interim injunction ordered by Mann J ([2007] EWHC 2829 (Ch); 23.11.07) pending trial. Under sections 10(1) and 10(4)(c) of the Trade Marks Act/Art 9(1)(a) and (3)(c) of the Regulation, 8PM had not “used the marks in the course of trade” nor had they “imported or exported” the trade marked goods.  

The facts were as follows. Customs seized a consignment of goods containing the products of four pharmaceutical companies, including Pfizer and Eli Lilly. Norris J granted an injunction requiring HM Revenue and Customs to deliver up the seized products to Pfizer’s solicitors. A Norwich Pharmacal order was also made requiring Customs to disclose the identity of the consignor (On the Application of Pfizer (Norris J; [2007] EWHC 3137 (Ch); 26.10.07).

The consignor was 8PM, an English pharmacy which, as a side operation, conducted business as follows. Customers in the USA would place an order on supported by a prescription. Canadadrug would order the goods from Turkey, where the drugs are cheaper. InTurkey genuine goods, in their original Lilly packaging, were placed in an anonymous brown cardboard box (in the case of HUMALOG and HUMULIN, small ice packs are included to prevent the product from overheating). Before being placed in its brown box, each product was given a label identifying the product and dosage, the customer and, in some cases, the prescription number allocated by Canadadrug. The affixed label also contained the name “Complete Care Pharmacy” and a PO Box number in Slough (No pharmacy operated from the PO Box number - anything sent to that address was redirected to 8PM). Each cardboard box was labelled with the name and address of the ultimate recipient and placed in larger boxes. The larger boxes were sent to 8PM, and, once Customs had released them, 8PM split the boxes open, liberated the smaller boxes and posted them to the USA using normal Royal Mail postal services. According to 8PM, this was a more reliable and cheaper method of distribution than distributing directly fromTurkey to the USA. 

Eli Lilly submitted that the name and address were intended to give the impression that the drugs had an English origin. As the patient would be more likely to trust an English company than a Turkish one, he was deceived. 

The Court of Appeal held that the essential function of Eli Lilly’s marks was “in no way jeopardised by 8PM’s activities” as no one in Europe would see the marks (following Davidoff C-414/99). Although in those circumstances, it would be unlikely that there would be infringement, the Court had to ask itself whether there was use of the marks “in the course of trade” and whether there had been an “import” or “export”.

Eli Lilly sought to distinguish Class International v Colgate Palmolive (C-405/03); that case was concerned with goods under actual Customs control, whereas 8PM use “inward processing” under Art 114 of the Customs Code (Regulation 2913/92).

The Court held that the different Customs procedure was a distinction without a difference. Just as in Class, the goods were not “released for circulation” and did not become “Community goods” under Art 4 of the Code. The goods were handled in accordance with the Code which under Art 531 and Annex 72 allows for packing and unpacking goods and “any usual form of handling … intended to … prepare them for distribution … provided that these operations do not change the nature or improve the performance of the goods”.

Consequently, the goods were never “imported” or “exported” and there was no interference with the proprietor’s right of first marketing in Europe.

Parallel imports: consent

Honda Motor Co Ltd & anr v Neesam & ors (Sir Andrew Park, [2008] EWHC 338 (Ch); 28.02.08) 

The judgment was solely about issues between Honda and the 4th defendant, KJM Superbikes Ltd. KJM had purchased a substantial number of motorbikes from Lime Exports in Australia. KJM claimed that, through Honda Australia, Honda had consented to the sales of the motorbikes in theUK and therefore they had a defence to the trade mark infringement case. The Judge did not accept the defence and granted summary judgment in respect of the bikes.

The Judge noted that following the decision of the Court of Appeal in Mastercigars Direct v Hunters & Frankau [2007] EWCA Civ 176, it could no longer be said that, although the ECJ inDavidoff C-414/99 acknowledged that consent could be implied and did not have to be express, that was almost entirely a theoretical point and in reality cases of implied consent were unlikely ever to arise.

The Judge held as follows:

  • Honda Australia sold many motorcycles to Lime Exports over the years, always for export from Australia. Honda Australia knew that Lime Exports was a dealer within the trade and it would be reselling the bikes, not to individual customers for private use, but to non-Australian purchasers which would resell the bikes.

  • It followed that Honda Australia impliedly consented to Lime Exports selling bikes to non-Australian purchasers and to such purchasers reselling bikes in their own national markets. This was not a case where, because the original vendor said nothing, it was not possible to tell whether there had been consent to the onward sales – there was an expectation that the purchasers would resell the bikes.

  • If Honda Australia wanted to impose a condition that Lime Exports must not resell bikes to businesses in the UK or otherwise in the EEA, it needed to say so. Further, the burden of proof was on Honda to prove what, if any, conditions it attached to the sales of the bikes.

  • There was insufficient evidence to find that when, in 1992, Honda Australia first began to supply bikes to Lime Exports, they imposed an express exclusion to the effect that Lime Exports must not resell bikes to purchasers in countries (including the UK) in which there were Honda-authorised distributors. Further, by Honda’s own admission, the exclusion was no longer in force at the material time in 1999 when Lime Exports first began to sell bikes to KJM. Therefore, in 1999, there was implied consent from Honda Australia for Lime Exports to resell bikes to purchasers in the UK, like KJM, and for such purchasers to resell the bikes in the UK market.

  •  Implied consent was withdrawn in mid-2003. At that time, Honda Australia adopted the practice of consistently asking for destination information in the course of exchanges between it and Lime Exports regarding prospective supply contracts. Consequently, if the bikes went to the destination which Lime Exports had notified to Honda Australia, implied consent was given. If the bikes did not go to the stated destination, consent was not given. On the evidence, Honda Australia might have notified Lime Exports of an omnibus prohibition against reselling the UK. However, the Judge was of the view that, even if it did not, the requests for destination information effectively achieved the same result.

  • Therefore, Honda was in principle entitled to relief in relation to the post July 2003 consignments, but not those made before that date. But because the defendants made a late application to amend their defence to plead breach of Article 81 of the EC Treaty (based on the withdrawal of consent to export the bikes to the UK being an agreement between Honda and Lime Exports having as its object or effect the prevention, distortion or restriction on competition), the result as to post July consignments had to await the outcome of that application.

  • Finally, the Judge gave summary judgment in relation to bikes purchased by KJM from another company called Boon Siew. Whereas Honda Australia was a wholly owned subsidiary of Honda and therefore Honda conceded that they were bound by the consents given by Honda Australia, Boon Siew was an independent third party. Without the concession, and taking into account the rigorous principles laid down in Davidoff, there was no real prospect that KJM would succeed in defending Honda’s claim of trade mark infringement. 

The last word on repackaging and relabelling?

Boehringer Ingelheim KG & anr v Swingward Ltd; Boehringer Ingelheim KG & anr v Dowelhurst Ltd; Glaxo Group Ltd v Swingward Ltd; Glaxo Group Ltd & anr v Dowelhurst Ltd; SmithKline Beecham PLC & ors v Dowelhurst Ltd; Eli Lilly & Co v. Dowelhurst Ltd*(The Master of the Rolls, Tuckey & Jacob LLJ; [2008] EWCA Civ 83; 21.02.08)

In giving judgment for the Court, Jacob LJ commented on the sorry state of affairs which led both “sides” (i.e. the drug companies and the parallel importers) to claim that, following ECJ 2, they had won; the uncertainty surrounding European trade mark law meant that really no one knew what the rules were.

The actions were for passing off and trade mark infringement for importing pharmaceuticals from elsewhere in the EU and over-stickering (relabelling) and reboxing (repackaging) them. By Laddie 1, questions had been referred to the ECJ and the ECJ responded in C-143/02 dated 23.04.02 (“ECJ 1”). In Laddie 2, judgment was given principally for the trade mark owners. That decision was appealed and the Court of Appeal gave judgment on 5.03.04, [2004] EWCA Civ 129 (“CA 1”). The Court of Appeal had doubts as to whether ECJ 1 had been applied correctly in Laddie 2 and therefore a further reference was made. It was answered in ECJ 2. ECJ 2 showed that Laddie J’s understanding of ECJ 1 was wrong and, consequently, the Court of Appeal would have allowed the appeals except for the fact that a further reference had been made to the ECJ by the Austrian Supreme Court in Case C-276/05, Wellcome v Paranova. Consequently, the Court of Appeal, having concluded that no damage was caused to the claimants’ trade marks, deferred making a final decision and asked the parties to make written submissions about the consequences of the Court’s ruling.

The Court of Appeal pointed out that, following ECJ 2, a parallel importer could rebox or over-sticker if that was the only way that it could get access to the market. Once that test had been overcome, no other “necessity” test applied – the only test was whether there was damage to the mark’s reputation. Consequently, the question for the Court of Appeal was reduced to the issue of whether the defendants complied with the 4th requirement of Bristol-Meyers Squibb v Paranova (joined cases C-427/93, C-429/93 and C-436/93) i.e. was the presentation of the defendants’ products “liable to damage the trade mark’s reputation”?

The Court of Appeal rejected the claimants’ submission that the decisions of Laddie J and the Court of Appeal (in Laddie 1 and CA 1 respectively) were made on a legally false basis because the definition of damage used by the ECJ was wider than that used by Laddie J. Co-branding and partial de-branding did not, in principle, damage a trade mark’s reputation – it depended on the way it was done. In the specific instances in this case, there was no damage caused to the claimants’ trade marks and consequently that Laddie J’s findings of fact had to stand. The Court of Appeal held that, until further submissions were made (see above), the defendants had complied with the 4th requirement in BMS.

Non-implementation of Directives

Commission of the European Communities v Luxembourg (ECJ (Fifth Chamber); C-328/07; 13.07.07) (Decision not yet in English)

The period for the transposition of Directive 2004/48/EC on the enforcement of intellectual property rights (the “Enforcement Directive”) into domestic law expired on 29 April 2006.Luxembourg failed to implement the Enforcement Directive within the prescribed time limit. As a result, and on request by the Commission, the ECJ declared that Luxembourg had failed to fulfil its obligations under the Enforcement Directive.

Note: On the 22 January 2008, the Commission commenced an action against Portugal for failing to implement the Enforcement Directive (or, in any event, for not communicating to the Commission that it had taken the necessary measures to implement the Directive).

Commission of the European Communities v Kingdom of Spain (ECJ (Fifth Chamber); C-32/07; 31.01.08) (Decision not yet in English)

The ECJ declared at the instance of the Commission that, by failing to adopt all of the laws, regulations and administrative measures necessary to comply with Directive 2001/84/EC on the resale right for the benefit of the author of an original work of art (the Resale Rights Directive),Spain had failed to fulfil its obligations under that Directive.

The period prescribed for transposing the Directive into national law expired on 31 December 2005. As Spain had not informed the Commission it had taken the necessary measures to do so, the Commission sent it a Demand requiring such measures to be taken within two months. Following Spain’s response, the Commission brought these proceedings before the ECJ.

Spain contested the admissibility of the proceedings on the basis of a supposed lack of precision in the Demand, which allegedly failed to adequately inform the country of the exact measures in the Directive for which transposition was outstanding. The ECJ rejected this ground on the basis that the Spanish authorities had recognised in documents submitted as part of the proceedings that certain of the Directive’s measures (precisely identified in those documents) had not been transposed.

Spain’s compliance fell to be assessed at the expiry date of the Commission’s Demand. On the substance, although the Spanish legislation partially transposed the Directive, all the necessary measures had not been taken.

Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Nick Aries, Hendrik Bechem, Taliah Davis, Emilia Linde and Polina Lanckriet.

ECJ and CFI decisions can be found at and the reported cases marked * can be found at