This month we report on invalidity proceedings relating to a Registered Community Design in Sphere Time v OHIM; Punch SAS and we report on the decision of the Patents County Court on unregistered design rights in cartons in Albert Packaging Ltd & Ots v Nampak Cartons & Healthcare Ltd.

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Decisions of the GC (formerly CFI) and CJ (formerly ECJ) 

Case   GC
Psytech International Ltd v OHIM; Institute for Personality & Ability Testing Inc.
Application (and where applicable, earlier mark)  

16 PF
- various goods and services in Classes 9, 16, 35, 41 and 42


The GC upheld the BoA’s finding that the mark (which stood for 16 personality factors and referred to a specific questionnaire on personality traits) should not be invalidated under Arts 7(1)(b), (c), (d) and 52(1)(a) and (b).

The relevant public consisted of the general public and professionals within the field of personality assessment. The link between the mark and the goods/services was not sufficiently clear and direct to fall foul of Art 7(1)(c) as regards the specialised public; the fact that some of the goods and services related to a system of personality analysis based on 16 factors was not sufficient to regard the mark as descriptive of these goods and services. Furthermore, the general public would perceive the mark as devoid of any meaning by all those who do not have a very good knowledge of behavioural studies.

Evidence suggested the mark had not become customarily used in the trade under Art 7(1)(d). The use of the mark in scientific publications could not be equated to use in business circles, and could not therefore act as evidence of customary use. Furthermore, the mark was not devoid of any distinctive character under Art 7(1)(b).

Finally, Psytech International’s attempts to demonstrate that the mark had been registered in bad faith under Art 52(1)(b) failed. The GC noted, inter alia, that the registration of the mark did not monopolise a generic scientific theory.



Union Investment Privatfonds GmbH v OHIM;
UniCredito Italiano SpA

Application (and where applicable, earlier mark)

Unicredit Wealth Management
- banking business, financial affairs, monetary affairs, insurance, real estate affairs, financial information (36)

- fund investments (36)
(German national mark)


The CJ set aside the GC’s judgment which annulled the BoA’s decisions to uphold the oppositions under Art 8(1)(b) (reported in CIPA Journal, May 2010).

The BoA had upheld the oppositions in respect of all services applied for except real estate affairs. The BoA held that Union Investment had established that its trade marks constituted a family of trade marks, each containing the prefix ‘UNI’ and that the relevant public would be led to associate the prefix with Union Investment when used in relation to fund investments.

The GC held that the BoA concluded ‘almost automatically’ that there was a likelihood of confusion without carrying out a thorough examination of a connection of the marks applied for with the relevant services. The CJ concluded that the GC had distorted the BoA’s analysis, had failed to examine aspects on which the BoA had made assessments and had failed to state sufficient grounds for its decision. The CJ noted, in particular, the findings the BoA had made in relation to the identical structure of the marks, the distinctive character of the earlier marks, the point of view of the relevant public, the common ‘UNI’ element and the distinctive character of the term ‘wealth management’. The GC excluded the existence of a likelihood of confusion without taking into consideration all the relevant factors.

The CJ referred the case back to the GC.


Mundipharma GmbH v OHIM; Asociación Farmaceuticos Mundi

Application (and where applicable, earlier mark)

- storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations (39)
- pharmaceutical and veterinary preparations and sanitary products for medical purposes, dietetic substances adapted for medical use (5)
- medical and veterinary services (44)


The GC dismissed the appeal from the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b), as the services of the mark applied for in Class 39 and the goods of the earlier mark in Class 5 were not similar.

The GC noted that even where the goods in Class 5 and the services in Class 39 displayed some kind of connection, in particular in so far as the manufacture and sale of these goods may also involve their storage, delivery, distribution and packaging, that fact was not sufficient for them to be considered complementary.

Mundipharma did not dispute the BoA’s finding that the relevant public for the Class 39 services was made up of professionals, while the end consumer of pharmaceutical preparations would buy them, for example, from a pharmacy without using those services. The GC noted that, by definition, goods and services intended for different publics cannot be complementary.

The BoA was correct to conclude that the goods and services were not similar.


Decisions not yet in English

Case   GC
Graf-Syteco GmbH & Co. KG v OHIM; Teco Electric & Machinery Co. Ltd
Application (and where applicable, earlier mark)  

- various goods and services related to computers and computer repair in Classes 9, 37, and 42
- various goods in Classes 7, 9 and 11
(German, Spanish, British and Benelux marks)


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

Case   GC
Dr. August Oetker Nahrungsmittel KG v OHIM; Bonfait BV
Application (and where applicable, earlier mark)

- ready meals made  from meat, fruit, vegetables or potatoes, frozen ready meals (29)
- ready meals made from  cereal, rice, pasta or sauce bases, frozen ready meals (30)
- various food products and types (not specifically ready meals or frozen ready meals) in Classes 29, 30 and 31
(Benelux mark)


The GC overturned the BoA’s decision and found that there was no likelihood of confusion between the mark applied for and the earlier mark under Art 8(1)(b).


T-475/09 - T-483/09
ATB Norte SL v OHIM; Bricocenter Italia Srl

Application (and where applicable, earlier mark)

and six other marks containing the ‘BRICO Center’ figurative element
- retail services, advertising, business management, commercial administration, office work (35)

- commercial business services, promotion of sales (35)
- installation of DIY products and tool hire services (37)
- transport, packaging, depot and delivery services for DIY products (39)


The GC overturned the BoA’s decision and found that there was a likelihood of confusion between the marks applied for and the earlier marks under Art 8(1)(b) in respect of advertising, business management and commercial administration services.

The rest of the appeal was rejected.


Late filing of evidence in Opposition Proceedings at OHIM

Union Investment Privatfonds GmbH v OHIM; Unicre-Cartão International De Crédito SA (CJ (Eighth Chamber); C-308/10; 19.05.11) (Decision not yet in English)

The CJ confirmed that OHIM had a large margin of discretion in deciding whether to consider facts or evidence submitted late in the opposition proceedings, in particular by taking into account, on the one hand, whether these elements are prima facie susceptible of showing real relevance for the outcome of the opposition proceedings and, on the other hand, the stage of the proceedings and the circumstances accompanying the late submission.

The Opposition Division had invited Union Investment to reply to Unicre-Cartão’s observations before 5 June 2002. Union Investment sent its observations by fax on 29 May 2002, but the original copy and the accompanying documents only reached OHIM on 6 June 2002. On 7 February 2003 additional submissions from Union Investment reached OHIM.

The CJ found that the GC had not erred by stating that the BoA had correctly applied its discretionary power by not allowing the documents that were submitted late by Union Investment. The BoA and the GC had correctly applied Article 74(2), in disregarding the late submitted documents (GC decision T-392/06 reported in CIPA Journal, May 2010). There was no reason why Union Investment could not have produced the documents within the set deadlines.

Passing off, copyright infringement and breach of trade mark co-existence agreement in relation to EDGE magazine

Future Publishing Ltd v The Edge Interactive Media Inc (“EIM”) & Ots* (Proudman J; [2011] EWHC 1489 (Ch); 13.06.11)

Proudman J held that EIM and its director had, by using Future’s EDGE logo, acted in fundamental breach of contract, infringed Future copyright in the logo, and attempted to appropriate the goodwill associated with Future’s  magazine, so as to amount to passing off. 

Future was a well-known publisher of computer gaming magazines, in particular the magazine ‘EDGE’, which had always been published under the following logo:

EIM and the second defendant were controlled exclusively by the third defendant, Dr Langdell.  Dr Langdell ran a business writing games software under the name Edge, and had used at least one version of an EDGE logo which was indistinguishable from Future Publishing’s EDGE logo. In 2004, Future had entered into a Concurrent Trading Agreement (“CTA”) with EIM, the primary effect of which was to assign to Future those parts of the trade marks owned by EIM which included the word EDGE and which covered EDGE magazine. Under the CTA, EIM agreed not to use or permit the use of the trade marks in a way which was or could reasonably be confusing with Future’s use. 

Proudman J found that Dr Langdell and the defendant companies were in fundamental breach of the CTA. They had deliberately adopted a logo which was an obvious replica of Future’s EDGE mark and had, among other things, used it on EIM’s website, letterhead and computer games. Such uses were confusing or could reasonably be confused with Future’s mark.

Having found that Dr Langdell had tried to appropriate for his own business the goodwill associated with EDGE Magazine, it followed that EIM’s acts amounted to passing off as representations likely to lead to confusion. Association with Dr Langdell was likely to cause serious damage to Future and Edge Magazine. 

EIM and Dr Langdell had infringed Future’s copyright by advertising and selling merchandise bearing the EDGE logo, which amounted to an issue of copies of the work to the public within Section 16(1)(b) of the CDPA. The Judge rejected Dr Langdell’s submission that Future could have no copyright in its EDGE logo because it was not original over the Franklin Gothic typeface.  Future’s logo possessed artistic originality because it had expended more than negligible or trivial effort or relevant skill in the creation of the logo, combining the stretching of the font with a distinctive slash and projection on the middle bar of the “E”. 

Finally, the Judge held that the defendants’ UK trade marks registered for computer games were invalid for non-use under Section 46(1).  The defendants could not rely upon Future’s use of the marks since the marks were not registered for magazines. Further, there was no creditable evidence that the mark had been used.  The Judge noted in passing that Future’s claims of passing off were not inconsistent with its claims for non-use since representations could still be made on websites directed into the UK in the absence of the conduct of a genuine business under that mark (Euromarket Designs Inc v Peters [2001] FSR 20).

Repackaging of goods

Orifarm A/S & ots v Merck & Co Inc & ots ; Paranova Danmark A/S & ots v Merck Sharp & Dohme Corp. & ots (AG Bot for the CJ; Joined Cases C-400/09 and C-207/10; 12.05.11) (Decision not yet in English)

This was a preliminary reference from the Danish Supreme Court (Højesteret) in relation to Article 7(2) of Directive 89/104.

The AG referred to Hoffmann-La Roche C-102/77 and Bristol-Myers Squibb C-427/93, C-429/93 and C-436/93, giving particular consideration to their conditions concerning the need for an indication on re-packaged goods of the identity of the re-packager. The AG interpreted this as requiring identification of the company which is responsible for and controls the re-packaging (who this is will be a question of fact in each case). In such circumstances, it would go beyond what is necessary to additionally require identification of the physical re-packager. In light of Boehringer-Ingelheim C-143/00 (reported in CIPA Journal, May 2002), this appeared to the AG to strike the right balance between the rights of the trade mark owner and the fundamental principle of free movement of goods within the internal market.


Invalidity proceedings relating to a Registered Community Design

Sphere Time v OHIM; Punch SAS (GC; T-68/10; 14.06.11)

Sphere Time owned the Registered Community Design (“RCD”) reproduced below, filed on 14 April 2005, intended to be used for watches:

Punch applied for a declaration of invalidity of Sphere Time’s RCD under Articles 25(1)(b) and 4-6 of the Community Designs Regulation (EC No. 6/2002), based upon alleged prior designs. Punch submitted catalogues showing two designs made by Fazhou Eagle Electronic Co Ltd (the ‘C and F’ Designs), and two designs made by Great Sun Technology Corp, one of which (the “SYMBICORT Design” reproduced below) was accompanied by a shipping invoice demonstrating shipping of goods from Hong Kong to the Netherlands dated April 2004 and a certificate of origin.

The Invalidity Division allowed the application on the basis that the contested design would produce the same overall impression as the C and F Designs. Sphere Time appealed, and the BoA dismissed the appeal, but referred only to the SYMBICORT Design in its decision.

The GC dismissed the appeal. Article 60(1) required the BoA to carry out a new, full examination of merits. The BoA was therefore fully entitled to consider the SYMBICORT Design without being bound by the decision of the Invalidity Division.

Sphere Time failed in its attempts to rely on the 12 month grace period in Article 7(2)(b) in order to establish a priority date of 14 April 2004, rather than the filing date of 14 April 2005 for their RCD. The GC held that the purpose of Article 7(2) was to offer the creator or his successor in title the opportunity to market a design for a period of 12 months before having to proceed with the formalities of filing. This Article was therefore not applicable to the present case as Sphere Time had not claimed to be the creator of the SYMBICORT Design or its successor in title. Thus the relevant date for considering priority was 14 April 2005. As the shipping invoice for the SYMBICORT Design was dated April 2004, goods made to the design would have been transported to the EU before the relevant date. The fact that the shipping invoice was provided by Great Sun Technology Corp, an interested party, did not affect its probative nature (although the GC noted that, for that reason, doubt might be cast on a statement provided to OHIM from the manager of Great Sun Technology).

In addition the BoA correctly assessed that the designs would create a similar overall impression. Although the BoA erred to a degree in defining the informed user simply as an ordinary consumer familiar with watches attached to a lanyard and suspended from the neck (the GC concluded that the informed user should be both the average consumer and the professional buyer), it was sufficient for a finding of a lack of distinctive character that one category of informed user would perceive the designs to produce the same overall impression.

When considering the degree of freedom of the designer, the GC held that, whilst design freedom with regards the lanyard was limited due to the need to ensure comfort, the design requirements of the watch element were less constraining. Though certain features needed to be present in the watch design, these did not significantly dictate the watch’s shape and general appearance. The BoA was correct to conclude that the differences between the designs were negligible (there was no significant difference between the respective widths and lengths of the lanyards, the colour of the SYMBICORT Design was not significant, given that no colour was claimed in Sphere Time’s design, the presence of the SYMBICORT mark was not significant and the details of the watch cases and watch faces were not sufficiently striking to influence the overall impression). The BoA was therefore also correct to conclude that the designs produced the same overall impression on the informed user and that Sphere Time’s design was devoid of distinctive character.

Unregistered design right in cartons

Albert Packaging Ltd (“AP”) & Ots v Nampak Cartons & Healthcare Ltd* (Judge Birss; [2011] EWPCC 015; 02.06.11)

Judge Birss held that the designers of cartons for tortilla-style wraps enjoyed unregistered design right (“UDR”) in their design in assembled form. However, Nampak’s products did not infringe that right.

The second and third claimants, who were the sole shareholders in AP, had designed a new kind of carton for wraps which were subsequently manufactured for Sainsbury.  They were supplied via an intermediary company which later chose to leave AP and supply a wrap carton product for Nampak instead. AP claimed that Nampak’s product was an infringing copy of its design. Nampak denied infringement and challenged the subsistence of UDR in AP’s carton.

AP defined its design in the following three ways: (i) the shape of the carton in assembled form; (ii) a generally rectangular box save in that the top face sloped downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face; and (iii) the distance from the shoulder of the pack to the top of the back panel, along the back panel, was 35mm regardless of the length or width or depth of the pack. The design of the carton unassembled is shown below, along with the Judge’s rough representations of the carton as assembled:

Applying the approaches taken by Mann J in Rowlawn Ltd v Turfmech Machinery [2008] EWHC 989 (Pat) and by the Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd [2007] F.S.R. 9, the Judge held that (ii) and (iii) were excluded by Section 213(3)(a) of the CDPA which excludes from protection methods or principles of construction.  In relation to (iii), to give AP a monopoly in the single dimension (A=35mm) regardless of the length, depth or width of the pack and regardless of the presence or shape of a window was too general. Although (ii) was narrower in scope than (iii), it was nothing more than a definition of a concept, rather than a definition of a design with a specific individual appearance. To accept that definition would be to give AP a monopoly in any pack which satisfied that definition, regardless of the relative dimensions or the shape of the window. 

In considering whether the design was commonplace under Section 213(4), the Judge held that the relevant design field was that of carton design rather than wrap box design, because a notional designer of the article concerned would be familiar with carton designs generally (Lambretta v Teddy Smith [2004] EWCA (Civ) 88).  The Judge found that (ii) and (iii) were commonplace designs of cartons. However, (i) was not commonplace; to find otherwise would be to deny packaging designers any design right at all and fail to recognise the skill they employed in producing a package which would assist in attracting a customer. The AP designers were therefore entitled to UDR in their design as defined in (i), but not (ii) and (iii). 

On the question of infringement, the Judge applied Virgin Atlantic v Premium [2009] EWHC 26 (Pat).  The Judge rejected Nampak’s assertion that its product had been designed completely independently of AP.  He considered that it could be inferred that Nampak had copied from AP due to the similarities between the products, which could not be explained simply as the product of a function, and because Nampak had had the opportunity to copy.  However, he accepted that the product derived from multiple sources.  As such it was necessary, when carrying out an objective comparison of the articles, to identify how much of the design could be said to derive from AP’s design.  The Judge found that Nampak’s cartons were not made substantially to AP’s design.  All the similarities derived from a source independent of the AP design and so there was no infringement of the design as set out in approach (i).  The Judge noted that he would reach the same conclusion on approach (ii).  However, in relation to approach (iii), if the design had been valid, he would have held that it was infringed since the single dimension (A=35mm) came, in his judgment, from the claimants.  However, to have found infringement of the overall carton shape would have had the effect of undermining Section 213(3)(a), as it would give UDR to something which was no more than a method or principle of construction applicable to articles with many different appearances. 


Effective technical measures in computer games

Nintendo Company Ltd & Anr v Console PC Com Ltd & Anr (Kitchin J; [2011] EWHC 1458 (Ch); 19.04.11)

Kitchin J held that Nintendo was entitled to summary judgment in its action against Console for circumvention of copy protection, as well as copyright and trade mark infringement.

The Judge, applying the principles set out in Nintendo v Playables [2010] EWHC 1932 (Ch), found that the security measures implemented by Nintendo were “technological measures” within the meaning of Section 296ZD of the CDPA.    Further, they were “effective technological measures” (“ETMs”) because they featured encryption and scrambling technology which controlled access.  As all games for the Nintendo DS comprised both computer programs and other copyright works, Nintendo’s claim under Section 296 also succeeded. Console’s game copiers did nothing other than circumvent Nintendo’s ETMs and Console had reason to believe that they would be used to make infringing copies of the relevant Nintendo programs.

Approach of the PCC to applications to amend statements of case

Temple Island Collection Ltd v New England Teas Ltd & Anr* (Judge Birss; [2011] EWPCC 019; 22.06.11)

In a case management conference in an action for copyright infringement, Judge Birss dismissed Temple Island’s application to amend the Particulars of Claim to add a new second artistic work, and outlined the general approach to amendments of statements of case in the PCC.

In relation to the latter, Judge Birss noted that the general approach was no different from the approach taken in the High Court.  Amendments would generally be allowed in order that the real dispute between the parties could be adjudicated. However, the discretion in the PCC would be conditioned by the particular nature and circumstances of the PCC procedure, such as the costs cap, and the focus on proportionality, which gave rise to a need for a strict costs-benefit analysis. 

Applying this approach, the Judge held that there was a low chance that adding the second work would make the difference between success and failure for Temple Island. Although it may have given Temple Island a chance of winning even if its primary claim failed, the incremental chance it would do so was low; the Judge considered that the amendment was nowhere near being a “killer blow”. Including the amendment would also add substantially to the cost and complexity of the case without a corresponding benefit to the resolution of the dispute. The application was dismissed.

Private use exception: fair compensation for copyright owners during cross-border sales

Stichting de Thuiskopie v Opus Supplies Deutschland GmbH & ots (AG Jääskinen for the CJ; C-462/09; 16.06.11)

The Hoge Raad der Nederlanden (Dutch appeal court) referred questions to the CJ concerning the ‘private use’ exception provided for by Article 5(2)(b) of Directive 2001/29/EC on Copyright in the Information Society.  This exception allows Member States to permit copying of protected works for private, non-commercial use provided that they ensure adequate compensation is paid to the copyright owner. The questions referred asked whether the Berne three step test, embodied in Article 5(5) of the Directive, meant that fair compensation must be paid in at least one Member State during cross border transactions.

The third defendant to the proceedings, Opus, sold blank recording media in Germany via a website, which was available in Dutch. Opus did not pay compensation to any German authority or collecting society for the media sold to Dutch customers. Furthermore, neither Opus nor its customers paid any compensation to Stichting de Thuiskopie, a Dutch collecting society. Under the contract of sale, Opus had made its customers responsible for shipping from Germany to the Netherlands. This was significant because under the Dutch implementation of Article 5(2)(b) it was either the manufacturer or the importer who was responsible for paying compensation to the copyright holders.

The CJ concluded Directive 2001/29/EC, in particular Articles 5(2)(b) and 5(5), must be interpreted as meaning that the final user who carries out, on a private basis, the reproduction of a protected work must, in principle, be the person responsible for paying the fair compensation. However, the CJ noted that there were practical difficulties in identifying private users and obliging them to compensate the right holders. Therefore it was open to Member States to establish a private copying levy chargeable to the persons who made the reproduction equipment, devices and media available to that final user, since they are able pass to the amount on to the final user in the amount charged for use of the service.

The CJ further concluded that it was for the Member State which introduced a system of private copying levies to ensure that the authors actually receive the fair compensation. The fact that the commercial seller of reproduction equipment, devices and media was established in a Member State other than that in which the purchasers resided had no bearing on that obligation. Where it was impossible to ensure the recovery of the compensation from the purchasers, it was for the national court to interpret the national law to allow recovery of the compensation from the person responsible for payment who was acting on a commercial basis.

Remuneration for phonograms played in hotel bedrooms

Phonographic Performance (Ireland) Ltd v Ireland & Ots (AG Trstenjak for the CJ; C-162/10; 29.06.11)

The High Court of Ireland posed a number of questions to the CJ concerning whether performers and phonogram producer’s right to equitable remuneration under Article 8(2) of the Rental Directive (Directive 2006/115/EC) arises where a hotel operator provides televisions and/or radios in guest bedrooms to which it distributes a broadcast signal.

The AG referred to SGAE v Rafael Hotels (C-306/05 reported in CIPA Journal, January 2007) which was closely connected to the questions referred by the High Court of Ireland and concluded as follows:

  • Article 8(2) is to be interpreted to the effect that a hotel which provides televisions and/or radios in bedrooms to which it distributes a broadcast signal, uses the phonograms played in the broadcasts for indirect communication to the public. The hotel operator constituted a ‘user’ under Article 8(2) and was therefore the person liable in respect of the right to equitable remuneration.
  • Member States are required to provide for a right to equitable remuneration vis-à-vis the hotel operator even if the radio/television broadcasters have already paid equitable remuneration for the use of the phonograms in their broadcasts.
  • Article 10(1)(a) of the Rental Directive did not provide an exemption for the hotel operators as there was no private use by the hotel bedrooms, even if the use by the customer in his bedroom had private character.
  • Furthermore, a hotel operator which provides both players for the phonograms and the relevant phonograms in physical or digital form, uses those phonograms for communication to the public under Article 8(2). The AG noted that there was a distinction between (i) persons providing players, without at the same time controlling access to copyright works (e.g. where televisions or radios are sold or rented or where an internet service provides access to the internet); and (ii) hotel operators which provide the players and the phonograms to their customers. Persons falling within category (i) do not make a communication to the public whereas the hotel operators described in (ii) do, as they provide hotel customers with direct access to the sounds fixed in the phonograms.


Katharine Stephens, Zoe Fuller and Hilary Atherton

Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Alexander Walker, Benjamin Woodfield, Domien Op de Beeck, Emma Drake, Nick Aries and Nick Boydell.

The reported cases marked * can be found at and the CJ’s decision can be found at