This month we report on registrability of movement marks in Sony Ericsson Mobile Communications AB v OHIM, we look at what constitutes infringement in broadcasting in ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”) and we look at a high-profile confidential information case concerning a "super-injunction" in Howard Donald v Adakini Ntuli.

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Decisions of the GC (formerly CFI)



Case   GC
T-59/08
Nute Partecipazioni SpA & Anr v OHIM; Worldgem Brands Srl
(07.12.10)
  
Application (and where applicable, earlier mark)  

NIMEI LA PERLA MODERN CLASSIC
- jewellery, gold articles, watches, precious metals, pearls, precious stones (14)



- swimwear, sportswear and clothing in general (25)
(Italian trade mark)


 

Comment

This was the second time this matter had come before the GC. In T-137/05, the GC (then CFI) held that (i) the earlier mark had a reputation for lingerie and swimwear; and (ii) in so far as the relevant goods belonged to adjacent market segments (i.e. jewellery and women’s clothing) a certain degree of similarity between the marks was sufficient for the connection necessary under Art 8(5). It therefore annulled the decision of the first BoA which had dismissed the application for a declaration of invalidity. On reallocation to the second BoA, the application for a declaration of invalidity was dismissed under Art 8(5) but allowed in part under Art 8(1)(b). In this decision, the GC annulled the BoA’s decision in so far as it dismissed the application for a declaration of invalidity under Art 8(5).


From the documents submitted by Nute Partecipazioni, it was apparent that the specialised press and professionals of the sector thought that items presented by Worldgem during fashion shows were connected to Nute Partecipazioni. The same impression also emerged from Worldgem’s advertising. Therefore an injury or likelihood of injury could not be ruled out.


The GC concluded that, by using a mark similar to the earlier mark, Worldgem tried to ride on the coat-tails of that mark in order to benefit from its power of attraction, reputation and prestige and to exploit the marketing effort expended. Thus, the resulting advantage must have been unfairly taken of the repute of the earlier mark. Such use was without due cause.  

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Case   GC
T-307/09
Liz Earle Beauty Co. Ltd v OHIM
(09.12.10)
Application (and where applicable, earlier mark)  


NATURALLY ACTIVE
- cosmetics, lotions, creams, gels and preparations for the skin (3)
- sunburn ointments (5)
- printed matter (16)
- wash bags, cosmetic bags and cases, handbags (18)
- retail services related to cosmetics, lotions, creams, gels and preparations for the skin (35)
- hygienic and beauty care for human beings, cosmetic treatments for the body, face and hair (44)

Comment

The GC upheld the BoA’s decision that the mark was devoid of any distinctive character under Art 7(1)(b) in relation to goods and services in Classes 3, 5, 16, 35 and 44. However, the GC annulled the BoA’s decision in relation to goods in Class 18.


The GC agreed with the BoA that the combination of words NATURALLY ACTIVE would not be perceived as unusual by the relevant public (European English speakers) but as a phrase having the meaning ‘something which acts or works in a not artificial way’. Furthermore the mark was a mere promotional indication which would be applicable to all goods and services relating to cosmetics and beauty care.


However, the BoA had failed to provide an adequate statement of its reasoning as to why NATURALLY ACTIVE lacked distinctive character with respect to goods in Class 18.


The GC also agreed with the BoA that Liz Earle had failed to show that NATURALLY ACTIVE had acquired distinctiveness under Art 7(3) as it had provided no evidence in respect of the Scandinavian countries, the Netherlands, Finland, Malta and Cyprus where the general public has a basic understanding of the English language. The evidence only concerned the UK, Ireland and Germany.

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Case

GC
T-331/09
Novartis AG v OHIM; Sanochemia Pharmazeutika AG
(15.12.10)


 

Application (and where applicable, earlier mark)

TOLPOSAN
- muscle relaxant medicines containing tolerison, muscle relaxant veterinary preparations containing tolperison (5)


TONOPAN
- analgesics suitable for treating headaches and migraines (5)
(International mark with effect, inter alia, in Austria and Spain)


 

Comment

The GC upheld the BoA’s decision to reject the opposition to the mark under Art 8(1)(b).


The BoA was correct to find that the goods at issue were, at most, slightly similar. The relevant public (medical professionals or end consumers) displayed a higher degree of attentiveness to the purchase of medicines. This was the case for the end consumer even when the medicinal product was sold without a prescription. A medicine’s therapeutic indication was of decisive importance when assessing similarity. The fact that medicines with different therapeutic indications might be used simultaneously did not necessarily mean they were complementary.


The GC agreed with the BoA that the marks were visually and phonetically of average similarity. Although the initial and end parts of the marks were identical, there were visual and phonetic differences in the middle part arising from the use of the letters ‘l’ and ‘s’ and the inversion of ‘o’ and ‘p’ in the mark applied for. It was not in dispute that conceptually the marks had no meaning.


In light of (i) the slight similarity between the goods and the average similarity between the signs; and (ii) the level of attentiveness of the relevant public, there was no likelihood of confusion. As the phonetic similarity was not high, this was the case even where the goods at issue were sold orally.

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Case

GC
T-451/09
Harry Wind v OHIM; Sanyang Industry Co Ltd
(15.12.10)


 

Application (and where applicable, earlier mark)

- all terrain vehicles (ATVs), senior people carts, motor cycles and scooters and their parts (12)


 



- motor vehicle bodywork services (37)
(German national mark)


 

Comment

The GC upheld the BoA’s decision to reject the opposition under Art 8(1)(b).


The BoA was correct to hold that the goods and services at issue were different. The nature and uses of the goods and services were different, although there was a certain complementarity, in so far as the bodywork of an ATV which had been damaged needed restoration. However, there was no evidence that consumers would expect vehicle manufacturers to operate garages for the removal of dents under the same brand as that identifying the vehicle itself or vice versa. Advertising by garages that they were specialists in the repair of certain makes of vehicles was not use of the trade marks for repair and maintenance services.    


As there was no similarity between the goods and services, the GC did not examine the similarity between the signs or the likelihood of confusion.


 

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Case

GC
T-281/09
Deutsche Steinzeug Cremer & Breuer AG v OHIM
(16.12.10)


 

Application (and where applicable, earlier mark)

CHROMA
- ceramic sanitary appliances (11)
- non-metallic building materials (19)


 

Comment

The GC upheld the BoA’s finding that the mark was descriptive of the goods concerned under Art 7(1)(c).


It was not disputed that the sign CHROMA was a transliteration of the Greek word ‘χρώμα’ (meaning colour) into Latin characters. Transliterations into Latin characters of Greek words must be treated the same way for the purpose of examining the absolute grounds of refusal. The BoA was correct to find that its meaning was capable of being immediately and directly understood by Greek-speaking consumers.


The BoA was correct to conclude that the sign CHROMA could serve to indicate to the relevant Greek-speaking consumer that the goods at issue were available in various colours and that it therefore designated a relevant characteristic in terms of the marketing of such goods.


 

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Case

GC
T-363/09
Longevity Health Products, Inc v OHIM; Gruppo Lepetit SpA
(16.12.10)


 

Application (and where applicable, earlier mark)

RESVEROL
- various pharmaceutical, veterinary and health care preparations (5)


LESTEROL
- preparation for combating arteriosclerosis (5)
(International mark with effect in Austria, Benelux, Germany, France, Hungary and Romania)


 

Comment

The GC dismissed the appeal from the BoA’s decision that there was a likelihood of confusion between the marks under Art 8(1)(b).


It was not disputed that the relevant public was health professionals and end consumers in the relevant countries and that the relevant goods were identical or similar. The GC held that, due to the nature of the goods, the level of attention of the relevant public would be relatively high.


Visually, the signs exhibited an average degree of similarity. Although it was settled case law that the consumer would generally pay greater attention to the beginning of a mark, in the present case the fact that the first letters were different could not prevent the signs at issue from being similar because (i) both letters were consonants; and (ii) the consumer would not stop at the first letter but rather would consider at least the first syllable. Therefore the visual differences could not counteract the similarities.


The GC held that there was also an average degree of phonetic similarity between the signs. No conceptual comparison could be made.


Due to the degree of similarity of the signs covering identical or similar goods, the fact that the relevant public’s attention was above average was not sufficient to dispel a likelihood of confusion.


 

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Decisions not yet in English



Case  

GC
T-253/09
T-254/09

Wilo SE v OHIM
(09.12.10)


 

Application (and where applicable, earlier mark)  


- pumps (7)
- control and regulating apparatuses (9)
- heating installations (11)


 



- pumps for heating installations, pumps (7)
- heat pumps (11)


 

Comment

The GC upheld the BoA’s decision that both marks were devoid of any distinctive character in relation to the goods applied for under Art 7(1)(b).


 







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Case  

GC
T-282/09
Federation internationale des logis v OHIM
(09.12.10)


 

Application (and where applicable, earlier mark)  


- soap and perfumery (3)
- suitcases, handbags, bags for travel, backpacks, (18)
- household linen (24)
- restaurant services (43)
- health spa services (44)


 

Comment

The GC upheld the BoA’s decision that the mark was devoid of any distinctive character in relation to the goods applied for under Art 7(1)(b).

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Case

GC
T-329/09
Federation internationale des logis v OHIM
(09.12.10)


 

Application (and where applicable, earlier mark)


- soap and perfumery (3)
- suitcases, handbags, bags for travel, backpacks, (18)
- household linen (24)
- restaurant services (43)
- health spa services (44)


 

Comment

The GC upheld the BoA’s decision that the mark was devoid of any distinctive character in relation to the goods applied for under Art 7(1)(b).


The GC upheld the BoA’s decision that the applicant could not amend its application for a colour per se into figurative mark consisting of a convex square in brown under Art 43(2). Even if it could have done so this would not change the conclusion on distinctive character.


 

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Case

GC
T-188/10
DTL Corporación S.L. v OHIM; Gestión de Recursos y Soluciones Empresariales S.L.
(15.12.10)


 

Application (and where applicable, earlier mark)


- repair and installation of  solar and other types of renewable energy systems (37)
- design services, technology consulting (42)



- repair and installation services (37)
- scientific, technological, research and design services (42)


 

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Art 8(1)(b).


The GC held that the marks were similar and the services were identical.


 

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Case

GC
T-132/09
Epcos AG v OHIM; Epco Sistemas SL
(15.12.10)


 

Application (and where applicable, earlier mark)


- materials made in ferrite (6)
- condensers, materials made in ferrite, thermistors, sensors (9)



- weighing, measuring, and controlling apparatuses and instruments (9)


 

Comment

The GC upheld the BoA’s decision that the opponent’s mark had been put to genuine use during the relevant period under Arts 42 (2) and (3) only with regard to measuring apparatuses in Class 9.


The GC concurred with the BoA that there was a likelihood of confusion between the respective marks with regard to thermistors and sensors under Art 8(1)(b).


 

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Case

GC
T-380/09
Luciano Bianchin v OHIM; Grotto SpA
(15.12.10)


 

Application (and where applicable, earlier mark)

GASOLINE
- eyeglasses, eyeglass cases, eyeglass frames (9)




- optical apparatuses and instruments, eyeglases, eyeglass frames, eyeglass cords and chains (19)


 

Comment

The GC dismissed the appeal from the BoA’s decision that the mark was invalid due to a likelihood of confusion between the marks under Arts 53 (1)(a) and 8(1)(b).


 

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Case

GC
T-497/09
LG Electronics, Inc v OHIM
(16.12.10)


 

Application (and where applicable, earlier mark)

KOMPRESSOR PLUS
- electric vacuum cleaners (7)


 

Comment

The GC upheld the BoA’s decision that the mark was descriptive in relation to the relevant goods under Art 7(1)(c).


 

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Case

GC
T-13/09
August Storck KG v OHIM
(16.12.10)


 

Application (and where applicable, earlier mark)


- confectionary, chocolate and chocolate products (30)


 

Comment

The GC upheld the BoA’s decision that the mark was devoid of any distinctive character in relation to the goods applied for under Art 7(1)(b).


 

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Case

GC
T-286/08
Fidelio KG v OHIM
(16.12.10)


 

Application (and where applicable, earlier mark) HALLUX
- orthopaedic articles (10)
- leather goods (18)
- footwear (25)
Comment

The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c) in relation to the goods applied for in Classes 10 and 25.


From the perspective of the average German consumer, the term HALLUX would directly relate to orthopaedic articles and shoes.

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Case

GC
T-161/09
Ilink Kommunikationssysteme GmbH v OHIM
(16.12.10)


 

Application (and where applicable, earlier mark) ILINK
- computer software and storage devices (9)
- telecommunications (38)
Comment

The GC upheld the BoA’s decision that the mark was descriptive in relation to all goods applied for under Art 7(1)(c).


 

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Case

GC
T-192/09
Amen Corner v OHIM; Comercio Electrónico Ojal
(17.12.10)


 

Application (and where applicable, earlier mark)


- scientific, and sound recording apparatus and instruments, computers (9)


 and


- various goods and services including clothing, games, education services, decorations, advertising and business administration, metals (3, 14, 25, 28, 35, 41)


 

Comment

The GC dismissed the appeal from the BoA’s decision that there was no similarity between the goods applied for and those of the earlier marks under Art 8(1)(b).


Furthermore, the requirements under Art 8(5) were not fulfilled.


 







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Marks with a reputation


Helena Rubinstein SNC & L’Oréal SA v OHIM; Allergan, Inc (GC; Joined Cases T-345/08 and T-357/08; 16.12.10)


The GC dismissed the appeals from the BoA’s decisions to invalidate the marks BOTOLIST and BOTOCYL under Articles 53(1)(a) and 8(5).


Helena Rubinstein successfully registered the mark BOTOLIST as a CTM for various toiletries in Class 3. L’Oréal successfully registered the mark BOTOCYL, also for various toiletries in Class 3. Allergan applied to invalidate both marks on the basis of a number of earlier Community and national marks relating to the sign BOTOX registered, in particular, for ‘pharmaceutical preparations for the treatment of neurological disorders, muscle dystomas, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain’ in Class 5.


Reputation of the earlier marks
Having regard to all the evidence submitted by Allergan, the GC concluded that the BoA had not erred in finding that the BOTOX mark had a reputation for ‘pharmaceutical preparations for the treatment of wrinkles’ in the UK as at the filing date of the later marks (6 May and 19 July 2002). The Court’s examination was limited to earlier UK marks as Allergan submitted most of its evidence from that territory. The GC noted in particular that, although the reputation of the earlier mark must be established as at the filing date of the application, post dated documents were not deprived of evidential value if they enabled conclusions to be drawn with regard to the situation as at the filing date.


The evidential value of such documents was likely to vary depending on whether the period covered was close to or distant from the filing date. As reputation is usually acquired progressively, the GC held that the general public’s awareness in the UK of the BOTOX mark and the market share of these products was not appreciably lower in 2002 than the levels in 2003 or 2004. The GC also held that the inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public.


Similarity of the marks
The GC concurred with the BoA’s conclusion that the public would naturally be led to establish a link between the marks BOTOLIST and BOTOCYL and the BOTOX mark. In reaching this conclusion, the GC dismissed the submission that the syllable ‘bot’ was an obvious reference to the active ingredient in Botox, botulinum toxin, and was therefore descriptive and non-distinctive. The GC concluded that ‘bot’ had no particular meaning and that there was a degree of similarity between the signs. Furthermore, although the relevant goods differed, they did nevertheless concern related market sectors.


Effects of use of the disputed marks
The GC held that the risk that the BOTOLIST and BOTOCYL marks could take advantage of the repute of BOTOX for the treatment of wrinkles which could, in turn, have the effect of decreasing the value of the BOTOX mark, was sufficiently serious and real to justify the application of Art 8(5). Furthermore Helena Rubinstein and L’Oréal acknowledged during the hearing that, even though their products did not contain the botulinum toxin, they nevertheless intended to take advantage of the image associated with that product, which was found in the BOTOX mark.








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Invalidation of a trade mark based on earlier unregistered right


Tresplain Investments Ltd v OHIM; Hoo Hing Holdings Ltd (GC; T-303/08; 09.12.10)


The GC upheld the BoA’s decision that Tresplain’s figurative CTM, (reproduced below, left, the characters read ‘Golden Elephant Brand’) registered for ‘rice’ in Class 30, was invalid under Articles 53(1)(c) and 8(4) because of Hoo Hing’s earlier unregistered figurative mark (reproduced below, right, the characters read ‘Golden Elephant’) which gave Hoo Hing the right under the English law of passing off to prohibit the use of the later mark.


           


The GC agreed with the BoA’s analysis of the English law of passing off and that the three conditions of goodwill, misrepresentation and damage for an action for passing off had been established.


In relation to goodwill, the GC concurred with the BoA’s finding that the relevant date for ascertaining whether Hoo Hing had acquired an earlier right in accordance with Article 8(4) (i.e. had acquired goodwill) was the date on which the application for the CTM was filed and not the date on which the CTM had been used for the first time in the UK. The GC held that Hoo Hing had acquired goodwill, stating that even small businesses can have goodwill. Hoo Hing had sold rice consistently under the earlier mark since 1988, in amounts which could not be regarded as totally insignificant. The mere fact that Hoo Hing’s market share was very small was not sufficient to justify a finding that such sales were below the de minimis threshold.


In relation to misrepresentation, the GC held that it was not necessary for Hoo Hing to adduce evidence of specific instances of confusion; it was for the court in question to determine whether it was likely that the relevant public would be deceived. The BoA correctly stated that the goods at issue and the word elements of the signs were identical. The GC found that, although there were considerable differences in the actual representation of the elephants’ heads, the differences were not sufficient to call into question the existence of misrepresentation. It was very likely that a significant number of Hoo Hing’s customers would presume that rice sold under Tresplain’s mark was rice marketed by Hoo Hing. The average consumer would take the view that the differences between the marks were merely ornamental or a mere variation of the earlier mark.


The GC noted that it was clear from English case law that Hoo Hing was not obliged to prove that it had suffered damage. The BoA had correctly found that there was a genuine likelihood that Hoo Hing would lose sales because its customers would erroneously buy Tresplain’s rice.


The GC refused to consider Tresplain’s submission that Hoo Hing had acquiesced concerning the use of the later mark. Such an argument was inadmissible because Tresplain failed to submit that ground of defence before OHIM.








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Keywords and electronic marketplace operators


L’Oréal SA & Ots v eBay International AG & Ots (AG Jääskinen for the CJ; C-324/09; 09.12.10)


eBay, an electronic marketplace operator (‘EMO’), bought keywords including trade marks from paid internet referencing services (such as Google’s AdWords) to attract customers to its website. L’Oréal, a manufacturer and supplier (by a closed selective distribution network) of perfumes, cosmetics and hair-care products, claimed that by buying such keywords, eBay attracted customers who bought, in addition to legitimate goods, branded goods that were counterfeit, unpackaged, or from non-EEA sources and which therefore infringed L’Oréal’s trade mark rights.


eBay operated a Verified Rights Owner (“VeRO”) programme, a notice and take-down system that provided intellectual property owners with assistance in removing infringing listings from its site. L’Oréal declined to participate in the VeRO programme, contending that it was inadequate and asked eBay to take steps to address its concerns of widespread sales of infringing goods on eBay’s European websites. However, unsatisfied with eBay’s response, L’Oréal brought a number of actions including one before High Court of England and Wales (reported CIPA Journal, June 2009) which referred a number of questions to the CJ. This action concerned the use of signs identical to L’Oréal trade marks on goods identical to those for which the trade marks were registered. L’Oréal sought to obtain a ruling that eBay was jointly liable with certain individuals who were infringing its trade marks and primarily liable (in relation to infringing goods) for keywords consisting of trade marks by purchasing them as sponsored links on third party search engines and using them on its own website.


Nature of the goods sold
The first question asked whether perfume and cosmetic testers and dramming bottles supplied to the trade mark proprietor’s authorised distributors but not intended for sale were ‘put on the market’ under Article 7(1) of the Trade Marks Directive. L’Oréal’s goods were supplied without charge and often marked ‘not for sale’ or ‘not for individual sale’. The AG followed Coty Prestige (C-127/09, reported CIPA Journal, July 2010), concluding that L’Oréal’s consent could not be implied in these circumstances, the goods had therefore not been ‘put on the market’.


The second and third questions asked whether the removal of boxes or other outer packaging from the perfumes and cosmetics without L’Oréal’s consent constituted a ‘legitimate reason’ to oppose further commercialisation under Article 7(2). The AG answered this in the affirmative, provided that, as a result of the removal of the outer packaging:


(i) the products did not bear the information required by Article 6(1) of the Cosmetics Directive; or


(ii) the removal of outer packaging could be considered as changing or impairing the condition of the goods (the AG noted that for products such as luxury cosmetics it was possible the package of the product could itself sometimes be considered as part of the condition of the product); or


(iii) the further commercialisation damaged or would likely to damage, the image of the goods and therefore the reputation of the trade mark.


Question four sought further clarification on whether such an effect could be presumed or whether the trade mark proprietor is required to prove actual or potential damage to the reputation of the trade mark, assumed in this case. The AG noted that in the present case it could be presumed unless the offer concerned a single or a few items by a seller clearly not acting in the course of trade.


eBay’s liability
Question five asked whether the display as a sponsored link of a sign identical to a registered trade mark, that had been purchased by an EMO, constituted ‘use’ of a sign under Article 5(1). The AG concluded that this constituted ‘use’, although he noted that eBay’s use was to advertise its own service of an electronic marketplace which was clearly not identical to the goods covered by L’Oréal’s trade marks and which was inherently different from the use by a seller of goods. However, following Google France (C-236/08 to C-238/08), an internet user usually enters a trade mark as a search term when looking for information or offers on the goods or services covered by that trade mark. Therefore, the display of advertising links to sites offering goods or services to competitors of the trade mark proprietor may be perceived by the internet user as alternatives to the goods or services of the trade mark proprietor.  Such a situation therefore did constitute ‘use’ of that sign in relation to the competitor’s goods or services.  


Question six asked whether clicking on the resulting sponsored link, leading the internet user directly to advertisements or offers for sale of goods identical to the trade mark registration, some of which infringed and some of which did not infringe the trade mark, constituted use by EMO of the sign ‘in relation to’ the infringing goods under Article 5(1)(a). The AG answered this in the affirmative. However, he added that it would not have an adverse effect on the functions of the trade mark provided that a reasonable average consumer understood on the basis of information included in the sponsored link that the operator of the electronic marketplace stored in his system advertisements or offers for sale of third parties. The adverse effect was not caused by the EMO, which is permitted to use a third party’s trade mark in relation to sales of second hand goods or, by analogy with a shopping centre, to market the goods or services offered by enterprises acting in its premises as permitted by Article 6(1)(b) and Article 6(1)(c) if the nature of the operator as a marketplace was sufficiently clearly communicated in the ad. Instead, the adverse effect would be caused by marketplace users’ use.


In response to question eight (which asked whether it made any difference if the use consisted of the display of the sign on the EMO’s website rather than in a sponsored link), the AG stated that when the sign was displayed on the EMO’s website rather than in a sponsored link of a search engine, use of the trade mark was not by the EMO but by its users. Such use was analogous to a newspaper publishing classified ads mentioning trade marks. Accordingly, any adverse effect on the origin, quality or investment function of the trade mark could not be attributed to the EMO unless national legal rules and the principle of secondary liability for trade mark infringements applied. Any other search and display functions provided by the EMO were technically similar to that of an internet search engine. Therefore, following Google France, the sign was not used by the EMO in these circumstances ‘in relation to’ the infringing goods under Article 5(1).


Non-EEA goods
In response to question seven, the AG concluded that where the goods offered for sale on the electronic marketplace had not yet been put on the market within the EEA by or with the consent of the trade mark proprietor, it was none the less sufficient for the exclusive right conferred by the trade mark to show that the advertisement was targeted at consumers within the territory covered by the trade mark. To conclude otherwise would mean that activities targeting EU markets could escape EU rules by merely situating the activity in a third country.


Hosting Exemption
Question nine asked three related queries as to the extent, if any, that eBay, as the host of an online marketplace, could benefit from the limitation of liability set out in Article 14(1) of Directive 2000/31 (the “E-Commerce Directive”).


First, if an EMO was found to be using a trade mark, did such use consist of or include ‘the storage of information provided by a recipient of the service’? In the AG’s opinion, for ‘question six uses’ (i.e. the advertisements and offers for sale that followed from a user clicking on a sponsored link), provided that the electronic marketplace’s users uploaded listings over which the EMO had no prior inspection or control, the EMO would have no actual knowledge of illegal activity or information and the Article 14(1) conditions would be fulfilled. However, for ‘question five uses’ (i.e. the display by a search engine of a trade mark in a sponsored link identical to a sign purchased by eBay), the information was not stored by the EMO but by the paid internet referencing service hosting provider. Therefore, for these uses, the EMO’s uses did not include ‘the storage of information provided by a recipient of the service’ and the conditions for Article 14(1) were not met.


Second, if some of an EMO’s uses fell within the scope of Article 14(1) and other uses did not, then was that EMO exempted from liability to the extent that some uses fell within the exemption but financial remedies still be awarded for uses that were not exempted from liability? The AG emphasised that when considering the E-Commerce Directive’s exemptions, the focus should be on the types of activity rather than the service provider type. Therefore, if an EMO was exempt from liability for hosting listings, it should not be exempt from liability in relation to sponsored links; it should remain exempted for activities covered by Article 14(1) but not exempted for other activities that were not covered. 


The third query asked if the EMO knew that goods had been advertised, offered for sale and sold on its website in infringement of registered trade marks and that such infringements were likely to continue by these activities for the same or similar goods by the same or different users of the website, did that constitute ‘actual knowledge’ or ‘awareness’ within the meaning of Article 14(1)? The AG answered this in the affirmative. The AG considered that ‘actual knowledge’ did not include a mere suspicion or assumption regarding illegal activity. The phrase could legally only refer to past and/or present, rather than future knowledge. In line with Article 15(1), the phrase excluded constructive knowledge. The AG opined that the EMO could be considered to have actual knowledge if a person, who had previously infringed a trade mark, shortly afterwards uploaded an offer for the same or similar goods under the same mark. In such a situation, it would be more natural to speak of the same continuous infringement, rather than separate infringements and the EMO would not benefit from the exemption of liability if it had been notified of a user’s infringing use of a trade mark and the same user continued or repeated the same infringement. 


Remedy: Scope of injunction available
The tenth question referred asked whether, when the services of an intermediary such as a website operator had been used to infringe a trade mark, Article 11 of Directive 2004/48 (the “IP Enforcement Directive”) required Member States to ensure that the trade mark proprietor could obtain an injunction against the intermediary to prevent further infringements of the trade mark (rather than just the specific act of infringement) and, if so, what the scope of the injunction should be. 


Pursuant to Article 3 of the IP Enforcement Directive, the AG recommended that the CJ rule that Member States be obliged to ensure that the trade mark proprietor could obtain an effective, dissuasive and proportionate injunction to prevent the continuation or repetition of that infringement by that third party. The requirement of proportionality excluded an injunction against the intermediary to prevent any further infringements of a trade mark, but did mean that the intermediary could be obliged to prevent the repetition of the same or a similar future infringement if such injunction was available under national law. However, the intermediary must know with certainty what was required from him and the injunction could not impose impossible, disproportionate or illegal duties such as a general monitoring duty. 








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Determination of the balance of injustice in an interim injunction application to restrain trade mark infringement and passing off


Cowshed Products Ltd v Island Origins Ltd, Mr O’Connor & Mrs O’Connor* (Judge Birss; [2010] EWHC 3357 (Ch); 17.12.10)


Judge Birss refused to grant Cowshed an interim injunction restraining Island Origins from using its “Jersey Cow” brand for a range of beauty and other products on the basis that the balance of injustice did not favour the grant of an injunction.


Cowshed sold a range of high-quality beauty and skin-care products, which were used in its spa at Babington House. The packaging of the products involved a floral element, the Cowshed name and a cow-themed subsidiary brand such as “Lippy Cow” for lip balm. Cow images rarely featured in the branding. Through a former web design company of theirs, Mr and Mrs O’Connor had worked with Cowshed to redesign the Cowshed website in 2008. In March 2010, Mr and Mrs O’Connor set up Island Origins for the purposes of selling Jersey origin products, including beauty and lifestyle products of the same general type as sold by Cowshed. The Island Origins packaging contained a cow silhouette with a floral print. Cowshed issued proceedings for trade mark infringement and passing off and applied for an interim injunction to restrain Island Origins from using the Jersey Cow brand.


Applying American Cyanamid [1975] AC 513, the Judge held that Cowshed had a good arguable case of passing off. It had goodwill and reputation in its cow theme and branding and there was a real possibility that a consumer who encountered “Jersey Cow” might think it was an extension of the Cowshed range. However, the Judge also held that Island Origins had an arguable defence: although Island Origins used a cow image, it did not do so in the same allusive way as Cowshed, where the “cow” was a reference to the person using the product.


As regards trade mark infringement, the Judge considered that JERSEY COW was unlikely to be confused with any of Cowshed’s “cow plus” marks (CHEEKY COW, LIPPY COW, MOODY COW etc). Cowshed’s best trade mark case was therefore based on dilution of its COW mark under Section 10(3). However, there was a triable issue on the validity of the COW mark since Island Origins had sought to revoke the mark for non-use under Section 46.


Having established that the case raised a triable issue on both sides, the Judge went on to consider the balance of irreparable harm. Given that Island Origins’ products were high quality, and that an expedited trial had been ordered, the Judge found that it was possible (albeit unlikely) that Cowshed would suffer serious irreparable harm before the trial. In contrast, the grant of an injunction was likely to put Island Origins out of business altogether since they had more than £400,000 worth of stock labelled, packaged and ready to go. Cowshed argued that Island Origins had only themselves to blame for this predicament but the Judge was not persuaded by this point since there was no evidence of deliberate stock piling.


With unquantifiable harm on both sides, the Judge could have elected to preserve the status quo. However, he declined to approach the matter on this basis since there was a dispute as to what the status quo was. Instead, the Judge followed the approach set out in Management Publications v Blenheim Exhibitions [1991] FSR 348 and asked himself whether one side or the other was more likely to suffer damage on account of the grant or refusal of an injunction. Judge Birss held that if the injunction was granted, it would effectively decide the action and there was a real risk that Island Origins’ business would be destroyed. In other words, there was a certainty of damage to Island Origins if the injunction was granted. However, there was only a risk of damage to Cowshed if the injunction was refused. Accordingly, the balance of injustice required that the injunction be refused.








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Ex parte injunction granted to restrain reverse passing off


Lifestyle Management Ltd v Frater* (Edwards-Stuart J; [2010] EWHC 3258 (TCC); 10.12.10)


Edwards-Stuart J granted an ex parte injunction requiring Mr Frater to direct all enquiries to his websites to a blank page, to deliver up confidential material and to refrain from making use of Lifestyle’s confidential information.


Lifestyle provided financial advice to expatriates from the UK and had a website, “offshorelsm.com”. Mr Frater had previously worked for Lifestyle as an agent. Following termination of his contract, Mr Frater registered the domain names, “offshorelsm.net”, “offshorelsm.org” and “offshorelsm.co.uk”. One of these websites bore a close resemblance to the home page of Lifestyle’s website, another contained confidential extracts of Lifestyle’s presentation to clients and all contained material that was arguably defamatory of Lifestyle and was calculated to damage its business. It was clear that Mr Frater’s intention was to injure Lifestyle’s business.


Edwards-Stuart J referred to BT v One in a Million [1998] EWCA Civ 1272 in which Aldous LJ confirmed that the Court had jurisdiction to grant injunctive relief where a defendant was equipped with an instrument of fraud such as a website with a name which would, by reason of its similarity to the name of another, inherently lead to passing off and Mr Frater was using Lifestyle’s name in a deceptive manner as per One in a Million and, since potential clients would be lead into thinking his three websites were Lifestyle’s websites, passing off was established. The Judge granted an injunction restraining Mr Frater’s behaviour.


As Mr Frater was domiciled in Scotland, the Judge was also required to consider the issue of whether the Court had jurisdiction to hear the action. The Judge held that there was jurisdiction since potential Lifestyle clients who lived in England or Wales might go onto Mr Frater’s website and be deceived. This was a harmful event under Rule 3(c) of Schedule 4 to the Civil Jurisdiction and Judgments Act 1982, which provides that a person domiciled in part of the UK may, in another part of the UK, be sued in matters relating to tort in the place where the harmful event occurred or may occur.








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Damages available on a “user” basis for trade mark infringement and passing off


ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”)* (Kitchin J; [2010] EWHC 303 (Ch); 25.11.10)


Kitchin J dismissed TVC’s application for summary judgment on ITV’s claim that TVC had infringed the copyright in its broadcasts under Section 20 CPDA.


TVC operated a website through which the public could watch live television by selecting a channel and being taken to a new page on which TVC provided a stream of the programme being broadcast on that channel at that time.  ITV accepted that TVC’s transmissions were not broadcasts within the meaning of Section 6, and were not made available to the public in such a way that the public could access them at a place and time chosen by them. Nevertheless, ITV contended, TVC’s transmissions did involve communication to the public by electronic transmission for the purposes of Section 20.


TVC contended that Section 20 required that the relevant transmission itself be a broadcast, and therefore have the characteristics of a broadcast, namely transmission for simultaneous reception by multiple members of the public (“one-to-many”).  As TVC’s broadcast was “one-to-one”, it did not have the necessary characteristics to infringe under Section 20.


Kitchin J held that TVC’s contention confused the protected work and the restricted act. The protected work, the broadcast, was the transmission of visual images, sounds and other information for reception by members of the public. The restricted act under Section 20 was the communication to the public by electronic transmission of all those images, sounds and other information. Section 20 was intended to implement Article 3 of the Information Society Directive (Directive 2001/29/EC) and accordingly had to be interpreted broadly so as to cover all communication to members of the public who were not present at the place where the communication originated. There was no requirement that the copy must itself be a broadcast.








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Place where act of “Making Available” occurs


National Guild of Removers & Storers Ltd v Christopher Silveria & Ots* (Judge Birss; [2010] EWPCC 15; 12.11.10)


This was a damages inquiry following judgment in default being given in four cases of trade mark infringement and/or passing off.  The Guild represented members of the removals and storage industry and was the proprietor of several registered trade marks. The Guild licensed its members to use its trade marks in return for a licence fee. The defendants had all used the Guild’s trade marks without a licence.


In all four cases, Judge Birss held that the kind of damage suffered by the Guild could be regarded as the loss of the royalty which it should have been paid in return for the defendants’ use of its trade marks. This kind of damage was recoverable in trade mark infringement and passing off cases because, where a defendant uses a mark without permission and thereby infringes a registered trade mark or commits an act of passing off, that act is capable of damaging the claimant’s property in the mark or goodwill in the business. This was an invasion of a lawful monopoly and thus damages calculated on a “user” basis should be available.


In each case, the Judge held that the licence fees payable by members of the Guild provided a useful guide in assessing the loss to the Guild caused by the unauthorised use by the defendants of the Guild’s marks. The fees provided a yardstick by which to judge what the Guild notionally would have charged to license the defendants to use the marks. Damages were therefore assessed by multiplying the relevant weekly licence fee for the relevant year by the period of unauthorised use.








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Selected decisions of the Appointed Person: January 2010 – June 2010


Case  

0-016-10
Unilever PLC v RDPR Ltd
(07.01.10)


 

Application (and where applicable, earlier mark)  

ROJA DOVE
- perfumes and perfumery products, aromatic substances for use in the manufacture of perfumes; perfumed products; perfumed bath foam preparations; perfumed bath sales; perfumed milks; perfumed lotions; perfumed sprays; perfumed creams; perfumed soaps (3);
- research services into the development of perfume products (42)


DOVE
- Soaps; perfumery (3)
- Research services relating to health, lifestyle, ski care, perfumery (44)

Comment

Mr Iain Purvis QC allowed the appeal from the HO’s decision under s 5(2)(b) in part and directed that ROJA DOVE be granted in respect of perfumes and perfumery products, aromatic substances for use in the manufacture of perfumes and research services into the development of perfumes. In respect of all other goods, he upheld the HO’s decision.


The HO had failed to distinguish between perfumes and perfumery products and the other goods applied for in Class 3. He should have made such a distinction because DOVE did not benefit from enhanced distinctiveness in relation to perfumes and the average consumer would be likely to pay more attention when purchasing perfumes than other goods in Class 3. Nevertheless, Mr Purvis concluded, the average consumer of perfumes was not likely to be confused because DOVE did not have a reputation in relation to perfume, the word DOVE was symbolic of purity and peace such that the public would not be surprised to find it being used by a variety of traders, and ROJA had no obvious meaning such that it had a high degree of significance in the mark as a whole, which made it unlikely that the public would believe that ROJA DOVE was a sub-brand of DOVE.


Regarding research services, the conceptual similarity found by the HO to exist in the mind of the average member of the public between DOVE and ROJA DOVE would not apply as Mr Roja Dove would be known to average consumers of perfume research services as a well-known perfumier.



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Case  

0-015-10
International Trappist Association v Vrijheid UK Ltd
(13.01.10)


 

Application (and where applicable, earlier mark)  

LE TRAPPISTE
- bar, restaurant, café, catering services; preparation of food and drink (43)



- bleaching preparations; cleaning, polishing preparation; soaps (3)
- coffee, tea, bread, pastry, sauces (30)
- beers (32)
- alcoholic beverages (except beers) (33)

Comment

Anna Carboni dismissed ITA’s appeal from the HO’s decision to dismiss ITA’s opposition under ss 5(2)(b), 5(3) and 5(4)(a).


The HO had not erred in his determination of the similarity of the marks by failing to give any weight to the dominant part of the marks (TRAPPIST and TRAPPISTE). It was not inherently contradictory to find that the dominant features were similar but the marks as a whole were different. If one element of a mark was dominant, it did not follow that the other elements were negligible.


The HO had, however, erred in his assessment of the distinctiveness of ITA’s mark, which was a collective mark that delivered a message that the mark would only be authorised for use on products approved by the Trappist order. In Ms Carboni’s view, such a mark had quite a strong distinctive character. Nevertheless, Ms Carboni concluded there was no likelihood of confusion since although a consumer who saw ITA’s mark on a beer bottle would assume that the beer emanated from the Trappists, that did not mean that he would assume that bars called LE TRAPPISTE were similarly connected.


The HO had not erred in finding that ITA’s mark did not have the requisite reputation for s 5(3). In the circumstances, where ITA’s beers amounted to only 0.69% of the Belgian beers sold in the UK, stronger evidence than extracts from websites, cook books and press articles and a “Best Beer” award in 1996 was needed to establish that a significant part of the relevant public knew the mark.


As regards s 5(4)(a), the HO was right to hold that there was no misrepresentation since consumers would not expect Trappists to have tied premises.

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Case

0-070-10
Breadtalk Pte Ltd v John Gilfillan
(19.02.10)


 

Application (and where applicable, earlier mark)

BREADTALK
- meat, fish, poultry, game; jellies, jams, fruits sauces; eggs, milk and milk products (29)
- coffee, tea; flour and preparations made from cereals, bread, pastry and confectionery (30)


 

Comment

Anna Carboni dismissed Mr Gilfillan’s appeal from the HO’s decision to revoke his mark for non-use under s 46(1).


Ms Carboni upheld the HO’s finding that Mr Gilfillan’s use of the mark on a website which was intended to act as a forum for discussion about bread, coffee etc was not use in relation to the goods for which the mark was registered. It was not therefore use which created or maintained a market in those goods and so not genuine use.


Ms Carboni also held that the HO was right to find that Mr Gilfillan did not have proper reasons for non-use. Neither a decision not to use a trade mark because of a dispute with a third party and/or negotiations to sell the mark and/or resultant financial constraints constituted proper reasons.


Mr Gilfillan’s appeal based on the premise that the HO’s decision to revoke the mark interfered with his right to peaceful enjoyment of his property under Article 1 Human Rights Convention was also rejected by Ms Carboni on the basis that it was clear from the text of Article 1 that there were circumstances in which it was legitimate to deprive a person of his possessions and that revocation of a person’s trade mark for non-use was such a circumstance.


 

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Case

0-103-10
O2 Holdings Ltd v 1-to-Z Ltd
(25.03.10)


 

Application (and where applicable, earlier mark)

BUBBLES
- educational computer software for use in, or relating to speech therapy (9)
- speech therapy services; organisation of meetings, seminars, lectures and forums; education and entertainment services in the form of electronic, computer and video games provided by means of the Internet and other remote communications devices; all relating to speech therapy and speech and language matters (41)
- speech therapy services, training services relating to speech (44)


 

Comment

The HO was unjustified in finding that there had been genuine use of the BUBBLES mark for services in Classes 41 and 44. Amanda Michaels therefore revoked the registration for those services. However, the HO had not erred in his analysis of genuine use of the goods in Class 9 and thus the appeal was rejected in this respect.


Only a maximum of five units of the BUBBLES software product had been sold at around £50 per unit. O2 argued that this level of use was inadequate to create or maintain a share in the market for the products, which might be used on a mass market basis by all children and their parents. However Ms Michaels noted that the wide range of goods in Class 9 was qualified in the original specification by the words “all the aforesaid goods for use in, or relating to speech therapy”. Putting the BUBBLES software into that more specialised economic context, Ms Michaels was not persuaded that the HO’s analysis in respect of the Class 9 goods was incorrect.


Regarding the Class 41 and 44 services, the HO had erred in his analysis of genuine use. The provision of an after-sales service for users of the BUBBLES software could not properly be described as offering a free-standing service; the website content relied upon essentially offered a user’s guide to the product. Further, there was no evidence that anyone had actually used the on-line ‘services’. The evidence of a single visit to the site where the user explored the multimedia games and interactive activities was not adequate. Lastly, the link on the website to a discussion forum did not provide adequate proof either that such a forum existed or that it had been accessed by the public at any relevant time.


 

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Case

0-201-08
Firstrung.com Ltd v Helen Adams
(15.12.10)


 

Application (and where applicable, earlier mark)

FIRSTRUNG
 - advertising on the Internet (35)
- information and advice pertaining to property, property ownership, personal finance (36)
- publishing including Internet publishing (41)


 



Comment

Professor Ruth Annand dismissed Helen Adams’ appeals against the HO’s decision to refuse registration under ss 3(6) and 5(4).


The HO had not wrongly relied on without prejudice correspondence; the HO had in fact referred to an open letter quoting two lines from apparently without prejudice emails.  Even assuming those emails were covered by without prejudice privilege, it had been waived by the actions of the parties.


In the second ground of appeal, Ms Adams complained that the HO had attributed too little weight to relevant factors.  In reality, Ms Adams was asking the Appointed Person to reassess the case.  As no error of principle was identified, the ground of appeal was not justified. Further, the HO had not made any incorrect findings of fact.


Professor Annand agreed with Ms Adams that it was irrelevant that she had applied for FIRSTRUNG in her own name rather than in the name of FirstRungNow Ltd (a company of which she was managing director). However the HO had not drawn any negative inference from this point.

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Case

0-148-10
National Westminster Bank PLC (“NatWest”) v Alternative Finance Group Ltd
(10.05.10)


 

Application (and where applicable, earlier mark)


- investment and savings, mortgages and home finance, commercial and corporate finance, insurance and security, banking and finance (36)
- advisory services relating to development of property (37)



- accounting services (35)
- financial services; banking services (36)

Comment

Professor Ruth Annand dismissed NatWest’s appeal from the HO’s decision to dismiss its opposition to AFG’s application under ss 5(2)(b) and 5(3).


The HO had found that the marks were moderately similar. Professor Ruth Annand held that the HO had not erred in arriving at this conclusion by finding that there was a lack of aural and conceptual similarity between the marks, translating this into dissimilarity between the marks and then subtracting that from the high level of visual similarity between the marks. In fact, the HO had found that the aural and conceptual aspects of the comparison were neutral. Where marks were reasonably visually similar but neither aurally nor conceptually similar or dissimilar, the HO was entitled on a global assessment to find that the marks were moderately similar.


Professor Annand held that the HO had not erred in his comparison of the marks by ignoring the reputation of NatWest’s mark since this was only relevant to the determination of likelihood of confusion and not to assessments of similarity.


Finally, Professor Annand held that the HO had not wrongly held that NatWest’s Class 36 services were not complementary to AFG’s Class 37 services. Whilst many property developments would be financed, the public would not necessarily believe that the development and financing were provided by the same or related undertakings. As the evidence that NatWest sought to introduce regarding property holdings by financial institutions had not been before the HO, Professor Annand held that the HO was entitled to find that the services were not complementary.


Since NatWest’s appeal under s 5(3) was based on the HO having misjudged the similarities in the marks and services, it also failed.

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Case

0-217-10
Fox International Group Ltd v Penn Fishing Tackle Manufacturing Co.
(30.06.10)


 

Application (and where applicable, earlier mark)

EXTREME
- Fishing tackle, fishing rods, reels and lines (28)

Comment

Professor Ruth Annand allowed Penn’s appeal from the HO’s decision to cancel its registration in part. The law on part cancellation for non-use required the identification of a fair specification which defined not the particular examples of goods for which there had been genuine use but the particular categories of goods they should be taken to exemplify. The question was how the average consumer would fairly describe the goods in relation to which the trade mark had been used having regard to their purpose and intended use.


The HO had found that there was genuine use of rods, but that the use had been made in respect of certain types of rods only. Accordingly, the HO held that the specification should be reduced from “rods” to “rods for use in sea fishing and saltwater fishing”. Professor Annand held that Penn had shown genuine use of EXTREME for various types of fishing rods and held that the specification as reformulated by the HO failed to achieve a just balance. The average consumer would not have chosen the HO’s description but would rather have said “fishing rods”. Penn’s specification for “fishing tackle” should also be maintained since it represented a fair description of the uses that had taken place.

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Monsoon Accessorize Ltd v Agatha Diffusion (Professor Ruth Annand sitting as an Appointed Person; O-024-10 & O-04-10; 18.01.10 & 02.02.10)


Professor Ruth Annand allowed the appeal from the decision of the Hearing Officer who had held that Agatha’s three-dimensional registration for a stylised Scottish terrier was not distinctive for the purposes of Section 3(1)(b) for goods which could not be made in the shape of a Scottish terrier. However, for goods in the shape of a Scottish terrier, the Hearing Officer was right to hold that Agatha’s proposed exclusions from the specification were of no assistance and both the three-dimensional and shape mark were non-distinctive and descriptive under Sections 3(1)(b) and (c)












 Device Mark:    Shape Mark:
     


Agatha owned two UK marks (example represented below) for a stylised representation of a terrier-type dog in two- and three-dimensional forms (the “Device Mark” and “Shape Mark” respectively).  The registrations were for, inter alia, perfumery and cosmetics in Class 3, jewellery, horological and chronometric instruments in Class 14, leather, bags, wallets, make-up bags and backpacks in Class 18 and clothing in Class 25. On appeal, Agatha conceded that both the Shape and Device Marks were non-distinctive and descriptive under Sections 3(1)(b) and 3(1)(c) for goods in the shape of a Scottish Terrier. However, Agatha nevertheless contended that the Hearing Officer had wrongly held that the objections could not be overcome by the exclusions agreed with the Registry at the examination stage. Professor Annand held that as Agatha had sought before the Hearing Officer to reserve a fall-back position (i.e. a narrower specification) if the Hearing Officer decided that the marks were objectionable, the Hearing Officer had two options: (i)  to decide the objection and narrower wording together; or (ii) to issue an interim decision and hold over the question of narrower wording. The Hearing Officer chose the first option; Agatha contended that he should have adopted the second. Professor Annand approved the Hearing Officer’s proposed approach and refused to issue an interim decision to enable exploration of the fall-back position because Agatha’s proposed exclusions, for example, “novelty earrings and novelty cufflinks” suffered from the same shortcomings as identified in Postkantoor (Case C-363/99) namely that “novelty” was a subjective term capable of different interpretations at different times, which could lead to legal uncertainty regarding the extent of protection afforded by the mark. Furthermore, “novelty” covered a specific characteristic of the goods rather than a sub-category, which was contrary to advice in the Manual of Trade Marks Practice.


In the second ground of appeal Agatha submitted that the Hearing Officer had wrongly held that the Shape Mark was non-distinctive under Section 3(1)(b). Professor Annand agreed, holding that the Hearing Officer had erred in principle in finding that the public were not used to seeing a three-dimensional object attached to a product as being an indication of origin and would perceive it as mere decoration. Indeed, the use and trade mark registrations of the well-known brand Radley indicated otherwise. Furthermore, a swing tag attached to a product could have one of the Device Marks imprinted over its entire face, or could be fashioned in leather into the three-dimensional Shape Mark. The difference between the two would be a question of millimetres. The Shape Mark bore no relationship to goods which could not take the form of a Scottish terrier and was thus distinctive for those goods for the purposes of Section 3(1)(b)








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Red Bull GmbH v Sun Mark Ltd (Amanda Michaels sitting as an Appointed Person; O-068-10; 16.02.10)


Amanda Michaels dismissed the appeal from the Hearing Officer’s decision to reject Red Bull’s opposition to an application to register the word BULLDOG for “still or carbonated health fruit drinks and health fruit juice drinks” in Class 32.


Red Bull’s opposition was based on nine earlier trade marks, including the word mark RED BULL, an international registration for the stylised word BULL (the ‘BULL mark’) and a CTM for the graphic representation shown below, all registered for a range of goods in Class 32.



Ms Michaels first considered the approach to the appeal. Contrary to Red Bull’s submission, an appeal to the Appointed Person should be approached in the same way as an appeal to the High Court, and was of review rather than re-hearing (Reef [2003] RPC 5). Whilst a distinct and material error of principle might justify interference, none of the alleged errors identified in the Grounds of Appeal was of real significance, and even in combination they did not justify treating the appeal as a re-hearing rather than a review.


Likelihood of confusion: Section 5(2)(b)
Ms Michaels held that the Hearing Officer was entitled to conclude that the marks had only a low level of visual and aural similarity. Regarding conceptual similarity, Red Bull submitted that the Hearing Officer had failed to consider the fact that the marks were similar because of “cultural” characteristics, i.e. that historically the dogs were breed for bull-baiting.  The difficulty with this argument was that the evidence did not establish that the relevant association would be made by the pubic in the UK.  Where reliance was placed upon conceptual similarities, the meaning relied upon must be clear and specific so that it could be grasped immediately by the relevant public (Ruiz Picasso v OHIM Case C-361/04, reported in the CIPA Journal, February 2006).  Such historical association was very unlikely to be something which would readily occur to the relevant public when buying a non-alcoholic drink in a bar or shop.


Contrary to Red Bull’s submission, the guidance in Ruiz-Picasso (that conceptual differences may be sufficient to counteract visual and phonetic similarities) applied even where both marks had a clear meaning.  The Hearing Officer was entitled to conclude that BULLDOG had a clear meaning that was easily distinguishable from the meaning of Red Bull’s marks, and that these conceptual differences were sufficient to overcome any visual or aural similarity arising from the presence of the shared word.


The Hearing Officer had not erred by failing to find that the BULL mark alone had an enhanced reputation.  Enhanced reputation in the UK could not be inferred merely from surveys from other jurisdictions.  The emphasis of the evidence submitted by the opponent dealt with the enhanced reputation of the name Red Bull, which the Hearing Officer had accepted.


Bad Faith: Section 3(6)
Red Bull’s allegation of bad faith - that Sun did not have the necessary intention to use the BULLDOG mark on the goods within the specification – was not clearly or adequately pleaded.  It was therefore difficult to suggest that the Hearing Officer had erred in failing to deal with it.  Even giving Red Bull the benefit of the doubt as to the adequacy of the pleading, Ms Michaels considered that the application was not made in bad faith.  There was no evidence that Sun was dishonest in its choice of wording of the specification and the inference from evidence was that the BULLDOG application was intended to provide Sun with a suitable alternative to a previous unsuccessful application for the mark BULLET.


Unfair advantage: Section 5(3)
The opposition under Section 5(3) was based on the RED BULL mark; no reliance was placed on the BULL mark and the sole point pursued on appeal was that the BULLDOG mark took unfair advantage of Red Bull’s reputation.  The Hearing Officer had held that there was the requisite link but thought that the evidence failed to demonstrate either that the link would affect economic behaviour or that the reputation of the earlier mark would be transposed to the later mark with the result that the marketing and selling of Sun’s goods became easier.  This, along with the low level of similarity between the marks, led him to conclude that the BULLDOG mark would not benefit from any unfair advantage. 


Red Bull submitted that the Hearing Officer’s decision would have been different in light of the decision in L’Oréal v Bellure [2010] RPC 1, C-487/07 which was decided one month afterwards, because the Hearing Officer looked for evidence that the link caused a change in the economic behaviour of consumers as he had followed the decision in Intel v CPM [2009] RPC 15, C-252/07.  Ms Michaels thought that Hearing Officer was perhaps looking for a higher level of commercial advantage than was necessary under L’Oréal.  As this may be an error of law, Ms Michaels decided to apply the law regarding unfair advantage as it stood after L’Oréal to the facts found by the Hearing Officer.  Red Bull’s case on unfair advantage was wrapped up with its evidence on bad faith and centred on the allegation that the BULLDOG mark would be used on a ‘copycat’ product. However, BULLDOG was a word mark only and there was insufficient evidence to infer that it would be used on copycat products or that Sun intended to take unfair advantage of Red Bull’s reputation.  The strength of Red Bull’s reputation and the identity of the goods must be weighed against the weakness of the link found by the Hearing Officer due to the low level of similarity of the marks.  Further, it was difficult to infer an economic benefit to Sun when it had already been found that there was no risk of economic detriment to Red Bull.  Accordingly, the opposition under Section 5(3) failed.








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John Williams & Barbara Williams v Canaries Seaschool SLU (Geoffrey Hobbs QC sitting as an Appointed Person; O-074-10; 23.02.10)


Geoffrey Hobbs QC dismissed Canaries Seaschool’s appeal from the Hearing Officer’s decision to refuse registration under Sections 3(6) and 5(4)(a).


John and Barbara Williams ran a sailing business called Club Sail Sea School. John Williams had designed the following Club Sail logo:



Mr and Mrs Williams’ son, Andrew Williams, entered into a collaboration with his parents which enabled him to participate in the operation of the business. However, some time later, Andrew Williams began operating autonomously of Mr and Mrs Williams albeit continuing to use their trading name, logo and domain names. Canaries Seaschool, Andrew Williams’ company, applied to register the device marks represented below for yacht charters in Class 39 and yacht sailing and powerboat school and training centre services in Class 41. 
  


 


Mr and Mrs Williams opposed the registration under Sections 3(6), 5(4)(a) and 5(4)(b). Andrew Williams alleged that he had an agreement with his parents under which he had acquired the rights to use the signs applied for. Mr and Mrs Williams denied that such an agreement existed. The Hearing Officer held that there was insufficient evidence to support either side’s version of events. This did not, however, relieve the Hearing Officer of his duty to assess the evidence with a view to determining whether Mr and Mrs Williams were precluded by agreement from objecting to Andrew Williams’ activities. Being unable to reach a determination on the evidence, the Hearing Officer should have proceeded on the basis that Mr and Mrs Williams’ right to object was unaffected by the existence of any such agreement. As a result of the Hearing Officer’s error, Mr Hobbs was required to determine the competing claims of the parties to the goodwill of the business appertaining to the signs in issue.


Goodwill accruing to the members of an alliance is owned collectively by the members (subject to any contractual arrangements). When a member ceases to be a member of the alliance, he ceases to have any interest in the collectively owned goodwill (subject to any contractual arrangements).  It is open to any of the existing members of an alliance to bring proceedings in passing off.


Mr Hobbs held that Mr and Mrs Williams were the only continuing members of the alliance. By the time he applied to register the marks, Andrew Williams had left the alliance, which meant that he was not thereafter entitled to claim rights of proprietorship in the collectively owned goodwill of the Club Sail Sea School or to validly authorise his company to claim such rights. Andrew Williams’ version of events was implausible and unavailing in the light of the evidence (or lack thereof, there being no documentary evidence to support Andrew Williams’ case).  Thus, the opposition under Section 5(4)(a) succeeded.


As regards Section 3(6), Mr Hobbs held that the knowledge, intentions and motives of Andrew Williams could be attributed to Canaries Seaschool. The behaviour of Andrew Williams, and hence the behaviour of Canaries Seaschool, was tainted by a desire to deprive Mr and Mrs Williams of their entitlement to the goodwill appertaining to the signs in issue, which was unacceptable on any view of what constitutes bad faith.








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DESIGNS


José Manuel Baena Grupo SA v OHIM; Herbert Neuman & Anr (GC; T-513/09; 16.12.10) (Decision not yet in English)


The GC allowed the appeal from the BoA’s decision to invalidate the Registered Community Design (RCD) under Articles 25(1)(b) and 6(1) of the Community Designs Regulations 6/2002.



José Manuel owned as the RCD reproduced below in respect of t-shirts, caps, stickers and printed materials.Mr Neuman and Mr Geldeano del Sel applied to invalidate the RCD on the basis of a CTM (reproduced below) registered, inter alia, for clothing, games, beers and soft drinks in Classes 25, 28 and 32.



 The BoA declared the RCD invalid under Article 25(1)(b) as the RCD lacked individual character under Article 6(1). However the GC reversed this decision and found the RCD valid, stating that the RCD had individual character as it produced a different overall impression (determined largely by the facial expression of each conflicting figure) from that of the earlier mark.







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 COPYRIGHT


Copyright in a graphical user interface and its infringement


Bezpečnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury (CJ (Third Chamber); C-393/09; 22.12.10)


Bezpečnostní softwarová asociace – Svaz softwarové ochrany (security software association (“BSA”)) applied to the Ministerstvo kultury (Ministry of Culture) for authorisation to allow the BSA to carry out the collective administration of computer program copyrights in the Czech Republic. Following a lengthy administrative process and legal review, the Ministry of Culture rejected BSA’s application on, inter alia, the ground that Czech copyright law protected only a computer program’s object and source codes but not the graphical user interface (“GUI”), i.e. the display of the program on the screen, which was protected only against unfair competition. 


The Czech Supreme Administrative Court stayed proceedings and made a reference to the CJ, asking (i) whether the phrase ‘the expression in any form of a computer program’ of Article 1(2) of Directive 91/250 (the Computer Software Directive, since replaced by Directive 2009/24) should be interpreted to include the GUI of the computer program (or a part thereof); and (if this was answered in the affirmative) (ii) whether television broadcasting that enabled the public to perceive the GUI (or a part thereof) without being able to actively exercise control over the program constituted ‘making a work or part thereof available to the public’ within the meaning of Article 3(1) of Directive 2001/29 (the Information Society Directive).


For the first question, the CJ noted that the Computer Software Directive did not define ‘expression in any form of a computer program’. Having regard to the overall objectives of that Directive and international law the CJ concluded that the object of protection conferred by the Directive was the expression in any form of a computer program which permitted reproduction in different computer languages, such as the source code and the object code. 


The CJ also noted that the Computer Software Directive’s recitals provided that interfaces are parts of a computer program that provide for interconnection and interaction of elements of software and hardware with other software and hardware and with users. The CJ concluded that a GUI was an interaction interface that enabled communication between the computer program and the user. It did not enable the reproduction of a computer program, but merely constituted an element of the program by which users could make use of the program’s features. Accordingly, the CJ held that a GUI did not constitute a form of expression of a computer program with the meaning of Article 1(2) so was not specifically protected by copyright by the Computer Software Directive


Although it had answered the first question in the negative, the CJ stated that it was appropriate to provide the national Court with an interpretation of any other elements of European Union law that could enable it to rule on the case before it. Accordingly, the CJ concluded that it was appropriate to consider whether copyright nevertheless subsisted in the GUI pursuant to the Information Society Directive and referred to Infopaq (C-5/08, reported in CIPA Journal, August 2009), in which the CJ held that copyright within the meaning of the Information Society Directive subsisted in subject-matter that was original in the sense that it was its author’s own intellectual creation. The CJ concluded that a GUI could be protected as a work under the ordinary law of copyright, under the Information Society Directive, provided it was the author’s own intellectual creation. In order to assess whether this criterion of originality was met, the CJ noted that account had to be taken of the specific arrangement or configuration of the components that formed the relevant part of the GUI, disregarding those components dictated by their technical function. 


In relation to the second question, the Information Society Directive’s recitals made clear that ‘communication to the public’ was to be interpreted broadly so as to establish a high level of protection for authors. Further, in principle, television broadcasting of a work is a communication to the public which the author has the exclusive right to authorise or prohibit. However, if viewers receive the communication of the GUI in a solely passive manner with no possibility of intervening, such that there can be no interaction between the computer program and the user, such individuals would have no access to the essential element characterising the interface, i.e. enabling interaction with the user. Accordingly, television broadcasting of the GUI would not constitute communication to the public within the meaning of Article 3(1)







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Copyright and know-how in machine translation software


Systran SA and Anr v European Commission (GC; T-19/07; 16.12.10) (Decision not yet in English)


The GC ordered the European Commission to pay Systran €12,001,000 in liquidated damages for infringement of Systran’s copyright and know-how in its machine translation software. The Commission was found liable under the second limb of Art 288 EC Treaty (non-contractual liability of EC institutions) as its conduct was unlawful, and Systran had suffered actual damage as a result of such conduct. For further details see GC press release available at:


http://curia.europa.eu/jcms/upload/docs/application/pdf/2010-12/cp100123en.pdf
 







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Questions referred to the CJ regarding database copyright


Football Dataco Ltd & Ots (“FDC”) v YAHOO! UK Ltd & Ots* (Jacob, Hooper & Rimer LJJ; [2010] EWCA Civ 1380; 09.12.10)


The Court of Appeal has referred a number of questions to the CJ regarding Article 3 of the Database Directive 96/9/EC. The issue was whether Football Dataco’s football fixture lists were databases which “by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation”. Football Dataco submitted that they were since there was data (being all the matches to be played), which had been arranged into the fixture list by the author. Alternatively, the work involved selecting data in the sense of selecting the matches to be played on a particular day. Yahoo! contended that Article 3 was limited to the selection or arrangement of pre-existing data and as such, the work of the authors in creating the fixture lists did not involve the right kind of intellectual creation. Giving a date to a football match was creating data, not selecting or arranging it. The Court could see force in both submissions and accordingly referred questions to the CJ regarding the meaning of the term, “author’s own intellectual creation”.


The Court also referred a question as to whether the Database Directive precludes national rights in the nature of copyright in databases other than those provided for by the Directive.


The Court declined to refer questions on Article 7, holding that the CJ had made it plain in cases such as Fixtures Marketing, Cases C-46/02, C-444/02 and C-338/02 that sui generis database right did not subsist in things like football fixture lists. 







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Copyright licence did not extend to newspaper back issues websites


MGN Ltd & Ots v Alan Grisbrook* (The Chancellor, Leveson & Etherton LJJ; [2010] EWCA Civ 1399; 09.12.10)


The Court of Appeal upheld the High Court’s decision that a licence granted to MGN, the publisher of the Daily Mirror, by Mr Grisbrook, a freelance photographer, to use his photographs in the Daily Mirror did not cover exploitation by MGN of back issues of the Daily Mirror online.


Mr Grisbrook was a freelance photographer who supplied MGN with a large number of photographs for publication in the Daily Mirror. There was no written or oral agreement between MGN and Mr Grisbrook governing their relationship, rather the terms were implied by conduct. It was common ground that copyright in each photograph was retained by Mr Grisbrook but MGN was entitled to publish the photograph in one or more of its daily publications. Mr Grisbrook was entitled to claim payment if a photograph was published. Subsequent use of the photograph in a paper produced for a different day generated a further, albeit lower, fee. In October 1997, Mr Grisbrook terminated MGN’s licence to use his photographs. Some time later, MGN established a number of websites as a means of making its back issues available online. Mr Grisbrook sued MGN for copyright infringement by: the sale or offer for sale of his photographs via its websites; reproducing his photographs in a database contained on the websites; and communicating them to the public by electronic transmission. MGN contended that its licence from Mr Grisbrook authorised those acts.


At first instance, Patten LJ held that a licence represents a derogation from the copyright owner’s statutory rights. It must therefore be for the defendant to justify (absent express agreement) the basis for extending the licence to cover what would otherwise be separate acts of infringement. MGN’s exploitation through the back numbers websites was, Patten LJ held, not something which was contemplated at the time when the licence was granted and could not have been said to be necessary to regulate the rights of the parties at that time. Accordingly, Mr Grisbrook’s copyright in his photographs was infringed by the operation of the back numbers websites.


MGN appealed on the basis that Patten LJ had incorrectly determined the extent of the licence by applying the wrong principle, namely consideration of what had been contemplated at the time the licence was granted. Alternatively, if this was the correct principle for ascertaining the scope of the licence, Patten LJ had incorrectly applied the principle to the facts.


Having considered the authorities, the Court of Appeal concluded that the test to be applied was that formulated in Beck v Montana Constructions Pty [1964-5] NSWR 229 namely: “the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent to licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement” (emphasis added). Accordingly, the principle adopted by Patten LJ was the correct one.


As to the application of that principle, MGN submitted that as the website was merely an alternative means of delivery of the original newspaper, the use of the photographs on the website was within the scope of the original licence. Operation of the website should simply be regarded as further delivery of the original, licensed, paper. The Court of Appeal was not persuaded, holding that as the website operated over a global area, its coverage was greatly in excess of what MGN could have achieved with hard copy newspapers. Accordingly, the parties would not, when the licence was granted, have intended that MGN should be entitled without further charge to exploit Mr Grisbrook’s copyright to such a greater extent. The licence covered hard copy newspapers which were essentially ephemeral. In contrast, the website provided a permanent record, which was available world-wide and as such could easily reduce the value of the photographs for further use.


MGN also submitted that Patten LJ had failed to take into account the fact that MGN owned the copyright in the newspaper as a whole: if every contributor to the finished newspaper was entitled to control the exploitation of the copyright in his contribution, he would be able to control the exploitation of the copyright by MGN in the newspaper as a whole. However, the Court of Appeal held that Patten LJ had taken this into account and had in fact held that the existence of overlapping copyrights merely demonstrated further the need for the compiler to obtain sufficient licences from his contributors.


Finally, MGN submitted that Patten LJ had failed to explain why, given that the original licences had been revoked, MGN was still entitled to exploit its hard copy back numbers but not entitled to exploit them online. The short answer, the Court of Appeal held, was that Section 20 CPDA recognises that exploitation by electronic means is different in kind from exploitation of existing hard copies and acts can constitute an infringement in the case of former but not in the case of the latter.







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No default judgment awarded against users of BitTorrent


Media C.A.T Ltd v A, and seven other actions * (Judge Birss; [2010] EWPCC 017; 01.12.10)


Judge Birss held that Media C.A.T was not entitled to judgment in default in any its eight parallel claims against separate individual defendants (A – H).  Media C.A.T represented various owners or exclusive licensees of copyright works (specifically pornographic films) and had the right to prosecute instances of copyright infringement of the works. The defendants were users of the peer-to-peer file sharing software known as BitTorrent, which allows users to share digital media content files on a network with other users (a “P2P network”). Media C.A.T claimed that each defendant had: reproduced the work by copying it onto their computer hard drive; made copies available on the internet to third parties for downloading using a P2P network; and operated an internet connection router that was not secured either adequately or at all so as to enable another to carry out an act of copyright infringement via the defendant’s internet connection. As a result the defendant had by himself or “by allowing others to do so” infringed the copyright subsisting in the works contrary to Sections 16(1)(a) and 17 of the CPDA or Sections 16(1)(d) and 20. Media C.A.T sought damages and an injunction ordering the defendant to take steps to safeguard his internet connection from being used to repeat the infringement.


In four cases, Media C.A.T filed a Request for Judgment on the basis that the defendant had not filed an admission or defence within the relevant time. In the other four cases, Media C.A.T filed a Request for Judgment on the basis that the defendant had not filed an acknowledgement of service within the relevant time. All requests were made under CPR Rule 12.3 and therefore did not involve notice to the defendant.


After examining the Court file, Judge Birss held that of the eight cases, three defendants had responded to the claim and so were not in default. In three other cases, there was simply no evidence that proceedings had been served (as required by paragraph 4.1(1) of the Practice Direction to CPR 12) there being no presumption that just because it was the court’s job to serve the claim form, it had in fact been served (Mayuk Kantilal Patel v Keith Smeaton (unrep CA 24 October 2000)). In the remaining two cases, Judge Birss held that the defendants were in default. However, CPR Rule 12.4(1) provides that default judgment may only be given in claims for damages or delivery up. In a claim for another remedy such as an injunction, a claim for default judgment must be made under CPR Part 23. The main difference between CPR 12 and CPR 23 is that notice must be given to the defendant under CPR 23. CPR Rule 12.4(3) does however allow a claimant who has claimed an unpermitted remedy to abandon it. On the facts, however, since Media C.A.T had not used direct and explicit language to indicate that they wished to abandon their claim for an injunction, CPR 12.4(1) was not satisfied and judgment in default would not be given.


In conclusion, the Judge commented that he was not sorry to have refused all requests for default judgment. The Request for Judgment was an essentially administrative procedure and was perhaps not appropriate in claims such as this one which raised difficult and potentially controversial legal issues. Furthermore, it was not clear what judgment the claimant might have been entitled to on the Particulars of Claim firstly since Media C.A.T’s right to be a claimant at all was somewhat unclear given that a copyright case may only be brought by the owner of copyright or an exclusive licensee, whereas Media C.A.T. merely “represented” such persons. Secondly, Media C.A.T made allegations about unsecured internet connections and there was no published decision in this country which dealt with that issue in the context of copyright infringement. Finally, the plea that “allowing” others to infringe was itself an act restricted by Sections 16(1)(a) and 17 was simply wrong. The term used by those sections was “authorising” and the difference may be important where the allegation was about unauthorised use of an internet router by third parties.







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Katharine Stephens, Zoe Fuller and Gina Brueton


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Alice Sculthorpe, Chelsea Roche, Hilary Atherton, Luisa Zukowski, Nick Aries, Nick Boydell, Rachel Fetches, Tim Harris, Toby Bond, Victoria Dearson, Victoria Gardner and Victoria Poyer.


The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the GC’s and CJ’s decision can be found at http://curia.europa.eu/jcms/jcms/j_6/home







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