This month we report on the anti-suit injunction to restrain Joltid from continuing proceedings against Skype in the US courts, regarding an exclusive jurisdiction clause in a software licence agreement and we also look at the CoA's dismissal of Lucasfilm's appeal in the Lucasfilm Limited & Ots (“Lucasfilm”) v Andrew Ainsworth.

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Please note following the entry into force of the Treaty of Lisbon on 1 December 2009, the CFI has been renamed the General Court (GC).


Case   GC
T-486/06
Liz Earle Beauty Co. Ltd  v OHIM
(09.12.09)
Application (and where applicable, earlier mark)  

SUPERSKIN


- various cosmetics (3)
-
nutraceuticals and dietetic foods, food for babies (5)
-
various hygienic and beauty care services (44)

Comment

The GC allowed in part Liz Earle’s appeal against the BoA’s decision to revoke the mark under Art 7(1)(c).

The GC firstly determined that the sign designated high-quality skin. This gave a sufficiently direct and specific relationship with the majority of goods applied for in Class 3, whose intended purpose was beautiful or healthy skin. The mark was therefore descriptive under Art 7(1)(c) in respect of these goods. There was also a sufficiently direct and specific relationship with the goods in Class 5. Although these goods were in the nutrition section, the GC concluded that they may be intended to produce an effect on the skin through their ingredients.

However, the GC also held that there was not a sufficiently direct and specific relationship between the mark and the remaining goods in Class 3 (such as perfumes) and the Class 44 services, as these products and services were not intended to improve or preserve the appearance or the health of the skin. Therefore, for these products and services, the mark did not breach Art 7(1)(c) and the GC allowed the appeal in respect of these.

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Decisions not yet in English
Case   CFI
T-150/08
REWE-Zentral AG v OHIM; Aldi Einkauf GmbH & Co OHG
(11.11.09)
Application (and where applicable, earlier mark)  

CLINA
- various goods including cosmetics, hairbrushes and toothbrushes (3, 21)
CLINAIR
- various goods including cosmetics, medical and dental products (3, 5).

Comment

The CFI dismissed REWE-Zentral’s appeal against the decision of the BoA to reject the mark owing to a likelihood of confusion with the earlier mark under Art 8(1)(b).

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Case   GC
T-223/08
T-245/08
Iranian Tobacco Co.  v OHIM; AD Bulgartabac Holding Sofia
(03.12.09)
Application (and where applicable, earlier mark)  

3


4


 

- cigarettes and tobacco (34)

 

 

Comment

Iranian Tobacco’s appeal against the decisions of the BoA to revoke the marks for non-use was dismissed under Arts 56(1) and 51(1).

Additional evidence of use of the marks was not adducible at this stage of the proceedings.

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Case   GC
T-484/08
Longevity Health Products, Inc.  v OHIM; Merck KGaA
(09.12.09)
Application (and where applicable, earlier mark)  

KIDS VITS
- pharmaceutical and veterinary medicinal products, health foods, dietary products for medicinal purposes (5)
VITS4KIDS
- dietary products for medicinal purposes (5)

Comment

The GC dismissed the appeal by Longevity Health Products and upheld the BoA’s decision to reject the application owing to a likelihood of confusion with the earlier mark under Art 8(1)(b).


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Case   GC
T-476/08
Media-Saturn-Holding GmbH v OHIM
(15.12.09)
Application (and where applicable, earlier mark)  

1



- various goods and services (1, 2, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 20, 21, 22, 27, 28, 35, 37, 38, 40, 41 and 42)

 

 

Comment

The GC dismissed the appeal by Media-Saturn-Holding and upheld the BoA’s decision to reject the application on the ground that the mark did not have sufficient distinctive character under Art 7(1)(b).

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Case   GC
T-490/07
Norartel SpA – Società informatica del Notariato  v  OHIM; SAT.1 SatellitenFernsehen GmbH
(17.12.09)
Application (and where applicable, earlier mark)  

 

R.U.N
- various services in relation to databases, programming, transmission of data and legal and administrative information (35, 38, 42)

RAN

- Various goods and services including transmission and broadcasting, computer programmes (9, 35, 38, 41, 42)

 

 

Comment

The GC dismissed the appeal against the BoA’s decision to reject the registration of the mark under Art 8(1)(b).
Given the similarity between the signs and the goods and services in question, there was a likelihood of confusion.

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Genuine use


Esber SA v OHIM; Coloris Global Coloring Concept (CFI (Third Chamber); T-353/07; 30.11.09)


The CFI upheld the BoA’s decision that Esber’s application for registration of the figurative sign (reproduced below) should be rejected under Article 8(1)(b) for the goods in Class 2 (paints; lacquers and dyes; thinners; enamels and aluminium powder for painting; binding preparations for paints) as Coloris had produced evidence of genuine use of an earlier national word mark COLORIS registered in France for various paints, varnishes and colorants in Class 2.


2


Esber submitted that the evidence provided to establish genuine use of the earlier mark showed the mark COLORIS appearing not on its own, but exclusively in complex forms (such as ‘coloris gcc’, ‘coloris global coloring concept’ or ‘coloris gcc global coloring concept’, together with an image of a globe) which altered its distinctive character for the purposes of Article 15(1)(a).  The CFI held that the BoA was correct to take these signs into consideration when assessing the evidence of genuine use of the earlier mark as none of them had any differences which altered the distinctive character of the earlier mark. 


The CFI also upheld the BoA’s decision that genuine use of the earlier mark during the relevant period in France had been established.  The evidence, considered as a whole, provided sufficient indications of the place, time, extent and nature of use of the earlier mark.  The CFI held that indications of time, place and extent of use could be inferred from the invoices for years 1999 to 2003, issued by Coloris to French and foreign clients as these proved the sale by Coloris, under the earlier mark, of large quantities of colorant to a great number of companies established in France during the relevant period.  The nature of use was established through the combination of various pieces of evidence.  A photograph of a metallic can indicated that the word mark appeared on packaging used to market colorants.  The probative value of the photograph was established by other evidence including a fax copy of a similar label (the fax showing a date within the relevant period), a number of invoices issued by printing and graphic design companies which expressly referred to the word mark COLORIS and the declaration of a manufacturer of metallic cans that, in 2002 and 2003, it sold some thousands of cans marked COLORIS to Coloris’ predecessor.  


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Concurrent opposition and revocation proceedings


Stella Kunststofftechnik GmbH v OHIM; Stella Pack S.A. (GC (Fifth Chamber); T-27/09; 10.12.09)


The GC dismissed Stella Kunststofftechnik’s (Stella) appeal in its entirety finding that the BoA had been correct to dismiss Stella’s appeal of the Cancellation Division’s decision to revoke its registered CTM STELLA for certain goods in Classes 6, 8, 16 and 20 under Articles 51(1) and 56(1) as it had not been put to genuine use for those goods. Stella Pack had brought the revocation proceedings following Stella’s opposition to its application to register a figurative mark containing the element ‘stella pack’ for certain goods in Classes 6, 16 and 21.  


Stella appealed the Cancellation Division’s decision on the basis that (i) the mark had been used; and (ii) the application for revocation should have been dismissed as inadmissible since the opposition proceedings based on that mark against Stella Pack’s application for a figurative mark were still pending.  The BoA dismissed Stella’s appeal on the basis that Stella had only reiterated that the mark had been used, whereas it should have supplied evidence to show why the evidence it had provided was adequate to demonstrate genuine use.  The BoA also stated that the opposition proceedings were not relevant. 


In support of its appeal of the BoA’s decision, Stella submitted that the BoA had wrongly rejected its submissions seeking to prove genuine use of the mark.  The GC rejected this, stating that a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under Article 44(1) of the Rules of Procedure of the Court, appear in the application itself.


Stella’s request for a dismissal (or, in the alternative a stay) of the revocation application based on the concurrent opposition proceedings, was rejected. It was apparent from the CTM Regulation that the two proceedings are distinct with their own purpose and effects and rules. Accordingly, the BoA was correct to hold that proceedings for revocation of a mark on the grounds of non-use are completely independent of any parallel opposition proceedings.  Revocation proceedings initiated after an opposition has been raised could, at most, cause the suspension of the opposition proceedings since, in the event the earlier mark is revoked, the opposition would be devoid of purpose.  The GC also held that this decision could not be challenged on the grounds that Stella’s right to equal treatment or its right to be heard had been infringed.  The GC found no infringement of Article 75 as Stella was able to set out its views on the matters of fact and law on which the contested decision was based before both the Cancellation Division and BoA.


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COPYRIGHT


Lucasfilm Limited & Ots (“Lucasfilm”) v Andrew Ainsworth (“Mr Ainsworth”) & Ots* (Rix, Jacob and Patten LJJ; [2009] EWCA Civ 1328; 16.12.09)


The CoA (Jacob J giving the lead Judgment) dismissed Lucasfilm’s appeal from the decision of the High Court ([2008] EWHC 1878 (Ch) reported in the CIPA Journal, September 2008) and upheld Mr Ainsworth’s cross appeal as to the English Court lacking jurisdiction to enforce US copyright. The stormtrooper helmets were not sculptures and Mr Ainsworth had defences to the allegations of infringement under Sections 51 and 52 of the CDPA.  The Court held that US copyright was not directly enforceable in the UK and as such the Court did not enforce a US Judgment which had held that Mr Ainsworth had infringed US copyright in the helmets.  Copyright in the helmets belonged to Lucasfilm and there was an implied term that Mr Ainsworth would assign any copyright he held in the helmet to Lucasfilm.


Infringement of UK Copyright

The facts of the case were set out in the Judgment of the High Court.  Lucasfilm appealed the decision of the High Court which held that the helmets were not sculptures and as such, that the copyright in the helmets had expired by virtue of Section 52.  The Court approved the guidelines set out by the Judge as to the scope of the classification of ‘sculpture’.  The Court held that the helmets were not sculptures under Section 4(1)(a) as they were not intended to be enjoyed as a visual thing.  The Court upheld the Judge’s finding that the paintings used by Mr Ainsworth to produce the helmets were design documents and as such Section 51 provided him with a defence to copyright infringement.


Enforcement of US Copyright by an English Court

It was undisputed that Mr Ainsworth had infringed Lucasfilm’s US copyright in the Stormtrooper helmets.  The CoA overturned the decision of the High Court that the English courts could accept jurisdiction to enforce such copyright and held that, except as provided for under the Brussels I Regulation (Regulation (EC) 44/2001 on Jurisdiction and the Recognition of Enforcement of Judgments in Civil and Commercial Matters) foreign intellectual property rights are not justiciable in the UK and as such the Court did not have jurisdiction to enforce Lucasfilm’s US copyright.  The jurisdiction in respect of intellectual property rights conferred by virtue of the Brussels I Regulation was not intended to have extra-territorial effect outside the EU.


Enforcement of US Judgement

The Court, following Adams v Cape Industries [1990] Ch 43 (CA), held that Mr Ainsworth did not have sufficient presence in the USA to enable the Court to enforce the US judgment for compensatory damages.  There was no fundamental difference between the internet and other methods of distance selling which would amount to Mr Ainsworth being treated as being present in the USA.


Assignment of Copyright

Although the Court held that there was no subsisting UK copyright in the helmets, such copyrights may still subsist in other countries.  The Court held that an obligation to assign any copyright which Mr Ainsworth created to Lucasfilm was implied into the agreement between the parties.


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Anti-suit Injunction Granted


Skype Technologies SA (“Skype”) v Joltid Ltd & Ots* (Lewison J; [2009] EWHC 2783 (Ch); 06.11.09)


The Judge granted an anti-suit injunction to restrain Joltid from continuing proceedings brought against Skype in the US Courts for infringement of the copyright in certain software in breach of an exclusive jurisdiction clause in a software licence agreement.


Skype provided free software for download which enabled users to communicate by voice and video calls and SMS without charge. Joltid owned copyright in software called the Global Index software (“GIS”) which was essential software for using Skype’s internet based communication platform. Joltid granted Skype a world-wide licence to use an object code form of the GIS (the “Licence”).  Joltid retained sole control of the source code.  The Licence contained a jurisdiction clause which provided that in the event of a claim arising, the parties must submit to the exclusive jurisdiction of the English courts.


Joltid claimed that Skype had breached the Licence having used and modified the source code for the GIS and as a result Joltid purported to terminate the Licence.  Skype continued to promote the download of the GIS following the purported termination. Joltid brought copyright infringement proceedings in the USA.


The Judge held that under Article 23 of the Brussels I Regulation (Regulation (EC) 44/2001 on Jurisdiction and the Recognition of Enforcement of Judgments in Civil and Commercial Matters) and by virtue of the exclusive jurisdiction clause in the Licence, the English courts had exclusive jurisdiction in respect of claims arising out of the Licence.  The Judge held that under Article 2 of the Regulation, the Court could not decline jurisdiction on the basis of forum non conveniens.  Initiating an action in the USA was a breach of the exclusive jurisdiction clause of the Licence.  Neither party had any English connection and as such had chosen England as a neutral forum for resolving their disputes.  The Judge exercised his discretion in granting an anti-suit injunction to restrain breaches of the exclusive jurisdiction clause.  Joltid was prohibited from taking any further steps in the US action against Skype and was ordered to discontinue the US action against it.  The Judge also ordered that Joltid should be restrained from commencing any further court proceedings in breach of the exclusive jurisdiction clause outside England and Wales.


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Implied Assignment of Copyright


Infection Control Enterprises Ltd (“ICEL”) v Virrage Industries Ltd & Anr (“Virrage”) (Judge Chambers; [2009] EWHC 2602 (QB); 22.10.09)


The Judge held that copyright in software developed by Virrage under an agreement with ICEL vested in Virrage.  There was no estoppel by convention to the effect that ICEL owned the copyright in the software.  There was an implied assignment of copyright in the software only on sale of the software to a third party.
 
ICEL entered into heads of agreement with Virrage to develop software to collate information in relation to hospital bred diseases such as MRSA (the “Agreement”).  The Agreement was entered into following non-performance by Link Information Systems Ltd (“LIS”) who had engaged Virrage as its subcontractor.  The original agreement between ICEL and LIS provided that ownership of the copyright in the software would pass to ICEL on full payment of the purchase price.  The Agreement was silent as to ownership of copyright and its terms were primarily directed to Virrage’s remuneration for its development work including royalty payments to Virrage for future licenses entered into by ICEL.


The Judge held that the ongoing royalty payments suggested that Virrage would retain ownership of the copyright in the software and, following the principles set out in Robin Ray v Classic FM [1998] 622, ICEL would only require a licence with the ability to sub-licence to give the Agreement business efficacy.


The Judge held that a provision in the Agreement for the distribution of sale proceeds between Virrage and ICEL upon ICEL selling the software ‘separately to a third party’ was a distribution of monies on assignment of the copyright in the software to a third party.  There were no other terms of the Agreement which required Virrage to assign its copyright.  The Judge held that there was an implied term that the copyright in the software would only be assigned on sale to a third party and that there was no estoppel by convention to the effect that ICEL owned the copyright in the software.


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Compatibility of French law with the EU Resale Right Directive


Fundació Gala-Salvador Dalí & Otr v Société des auteurs dans les arts graphiques et plastiques & Ots (AG Sharpston for the ECJ; C-518/08; 17.12.09)


The Tribunal de Grande Instance in Paris made a reference to the ECJ on the interpretation of Directive 2001/84 on the resale right for the benefit of the author of an original work of art (the “Resale Right Directive”).  AG Sharpston proposed that the ECJ should find that the Resale Right Directive does not preclude French law from limiting the beneficiaries of the resale right to heirs of the author.


The Resale Right Directive requires Member States to provide to the author of a graphic or plastic work and “those entitled under him/her” after the author’s death a “resale right” to receive a royalty, uniform across all Members States, based on the sale price obtained for any resale of the work. 


Under the French implementation of the Resale Right Directive, heirs to the author are the exclusive beneficiaries of the resale right, to the exclusion of successors in title or legatees.  This implementation was challenged in the French courts by a foundation set up by Salvador Dalí which was the successor in title to Dalí’s works and the Spanish collecting society VEGAP, which was tasked with collecting revenue from Dalí’s works worldwide on behalf of the foundation.


The Tribunal de Grande Instance asked the ECJ whether the French limitation of the resale right to heirs was compliant with the Directive.  AG Sharpston considered that the purpose of the Resale Right Directive was to ensure that there were no Member States where the resale right was either not applied or was less onerous than in other Member States.  AG Sharpston opined that the Resale Right Directive leaves the interpretation of “those entitled under him/her” to national law on the grounds that differences between national laws, such as succession laws, which do not affect the functioning of the internal market, are to be left intact.



Katharine Stephens, Zoe Fuller and Emily Peters


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Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Caroline Friend, Nadia Hussein, Nick Boydell, Claire Chapman and Nathan Capone.

The reported cases marked * can be found at http://www.bailii.org/databases.html and ECJ and CFI decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home.