This month we report on the CJEU decision in Chartered Institute of Patent Attorneys v Registrar of Trade Marks on the scope of protection of the NICE classification headings for goods and services and the requirement for applicants to clearly and precisely identify the protection being sought. We also report on the Supreme Court decision in Oracle America Inc (formerly Sun Microsystems) v M-Tech Data Ltd concerning parallel imports, as well as the decision of the Court of Appeal in the long running trade mark dispute between Budejovicky Budvar and Anheuser-Busch.


To be taken to your case of interest please click on the title below:

Decisions of the GC and the CJEU


Case  

T-233/10
Nike International Ltd  v OHIM; Intermar Simanto Nahmias
(25.05.12)

Application (and where applicable, earlier mark)  

JUMPMAN


- clothing, footwear and headgear, including other apparel (25)


JUMP


- clothing, footwear and  headgear (25)


(Spanish mark)

Comment

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


The GC upheld the BoA’s finding that the meaning of the word “jump” was not known to the relevant public. To the Spanish public this word would be perceived as a “fanciful term”. Therefore, the earlier sign had average distinctive character. The signs were visually and phonetically similar due to the common element “jump” which was the beginning of the mark applied for. The GC affirmed that the addition of the word “man” was insufficient to outweigh the visual and phonetic similarity between the marks.

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Case   T-165/11
Stichting Regionaal Opleidingencentrum van Amsterdam v OHIM; Investimust SA
(12.06.12)
Application (and where applicable, earlier mark)  

COLLEGE


- services relating to travel and tourism (39)


- provision of accommodation services (43)

Comment

TThe GC upheld the BoA’s decision that the mark was not invalid under Art 7(1)(c) and Art 7(1)(b).


The word “college” in English and French, as well as in other relevant EU languages, designates all educational institutes and did not generally call to mind tourism and accommodation services in the mind of the relevant public. It was not sufficient for the applicant to argue that registration of the word would hinder its use by certain organisers of educational or school trips. As such the mark was not descriptive under Art 7(1)(c) and therefore there was no public interest that the mark be open for use by third parties for such services. A consumer would not expect that hotel accommodation services that used the terms “college” would be linked to an educational institution. This was the case even though some universities might offer accommodation.


The mark was not descriptive and as no evidence was put forward that the mark lacked distinctive character under Art 7(1)(b).

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Case

GC
T-342/10
Paul Hartmann AG v OHIM; Mölnlycke Health Care AB
(13.06.12)

Application (and where applicable, earlier mark)

MESILETTE


- medical and surgical plasters and related goods (5)


MEDINETTE


- hospital clothing (25)


(German and International marks)

Comment

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


The GC held that the marks had an average degree of visual and phonetic similarity, as both consisted of a single word with four syllables, had the same number of letters, began with “me” and ended in “ette”. The assessment of the visual and phonetic similarity was not weakened by the “medi” element of the earlier marks, which assumed “medi” alluded to the medical sector.


The GC held that there was a certain conceptual difference, as the “medi” element of the earlier marks alluded to links to the medical sector, whereas MESILETTE had no clear meaning. However, this did not counteract the average degree of visual and phonetic similarity. Taken together with the fact that the goods at issue were similar to a certain degree there was a likelihood of confusion.

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Case

GC
T-519/10
Kabushiki Kaisha Seikoh Giken v OHIM;  Seiko Holdings Kabushiki Kaisha
(13.06.12)

Application (and where applicable, earlier mark)

SG SEIKOH GIKEN



- goods and services in classes 3, 7 and 9


SEIKO


- goods and services in classes 1 to 42


(Community mark)

Comment

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


The GC upheld the BoA’s decision that there was a low degree of visual and aural similarity between the marks and also the irrelevance of a conceptual comparison of the signs was not relevant due to their lack of meaning in any EU languages.


In determining the likelihood of confusion, the BoA correctly took into account all the relevant factors of the case, especially the identical nature of the goods, the similarity albeit weak between the signs and the average degree of attention of the relevant public.

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Case

GC
T-534/10
Organismos Kypriakis Galaktokomikis Viomichanias v OHIM; Garmo AG
(13.06.12)

Application (and where applicable, earlier mark)

HELLIM


- milk and milk products (29)


HALLOUMI


- cheese (29)


(Community collective mark)

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion under Art 8(1)(b), although their findings of fact were different.


The BoA had erred in holding that there was a low degree of visual and phonetic similarity between the marks. In light of the length and arrangement of the letters and different vowels used, there was no visual or phonetic similarity between the marks.


That the Turkish translation of the Greek word “halloumi” is “hellim” was considered by the GC. The BoA had erred in finding that there was no conceptual similarity on the basis that Turkish was not an official language of the EU. Turkish was one of the official languages of Cyprus and the average consumer in Cyprus would understand that the words both referred to the same speciality cheese. Consequently there was some conceptual similarity.


The GC held that the BoA was correct to find that the fact that an earlier mark was a collective mark did not give rise to a presumption that the mark had an average distinctive character. Even although the goods were identical or similar, there was no likelihood of confusion.

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Case

GC
T-293/10
Seven Towns Ltd v OHIM
(14.06.12)

Application (and where applicable, earlier mark)


Colour mark per se


(six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours; and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments)


- toys, puzzles and games (28)

Comment

The GC upheld the BoA’s decision to reject the application under Art (4).


The mode of representation of the coloured squares, in particular the black borders, was incompatible with the requirements for colour marks per se.


With regard to the description of the mark, the BoA was correct to conclude that it was necessary to expend a huge amount of intellectual energy and imagination in order to understand what sign the applicant sought to protect. The applicant, the proprietor of the 3-D mark for a Rubik’s cube, submitted that the description clearly referred to a cube. However, a rectangular parallelepiped also met that description.


Even if the description had been clear and easily intelligible, it would have contained an inherent contradiction in so far as it did not define a colour mark per se, but a 3-D or figurative mark corresponding to the external appearance of a particular object with a specific form.


The BoA was therefore right to find that the overall description of the mark was ambiguous and contradictory and that the applicant had failed to provide a graphic representation of its mark that was clear, concise, easily accessible and intelligible.

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Case

GC
T-357/10
Kraft Foods Schweiz Holding GmbH v OHIM; Compañia Nacional de Chocolates SA
(20.06.12)

Application (and where applicable, earlier mark)


- chocolate (30)


KARUNA


- chocolate (30)


(Estonian, Latvian and Lithuanian national marks)

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b).


Visually, the marks were not similar. Although the marks had three letters in common, the first part of the marks (“co” and “ka”), to which consumers normally attach most importance, differed. Furthermore, the mark applied for had figurative elements which distinguished it from the earlier marks.


Phonetically, there was only a low degree of similarity. No conceptual comparison was possible. Although “corona” meant “crown” in Spanish, it did not have any meaning in Estonian, Latvian or Lithuanian.


Given these findings, the BoA was correct to conclude that there was no possibility that the relevant public would confuse the marks, despite the identity of the goods. The GC noted that the visual aspect was particularly important with regard to chocolate, which is normally selected from shop shelves.
 
As there was no similarity between the marks, the plea based on Art 8(5) also failed.

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Case

GC
T-276/09
Kavaklider-Europe v OHIM; Yakult Honsha Kabushiki Kaisha
(21.06.12)

Application (and where applicable, earlier mark)

YAKUT


- alcoholic beverages (except beers) (33)



- beers, bottled waters and other non-alcoholic drinks (32)

Comment

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


The BoA was correct to have found that there was a high degree of visual and phonetic similarity between the marks. The GC observed that the letters in YAKUT were in the same order as they were used in YAKULT. The letter “l”, due to its late placing within the word and its thin nature, would be barely visible to the consumer and its appearance would not result in a noticeable difference in pronunciation of the two words in question. The brackets surrounding the word “yakult” were considered to be a simple geometric shape that would evoke no extra meaning to the consumer. As both words were devoid of meaning there could be no conceptual comparison.


The combination of the above similarities meant that the BoA was correct to find a likelihood of confusion between the marks.

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Case

GC
T-514/10
Fruit of the Loom Inc v OHIM; Blueshore Management SA
(21.06.12)

Application (and where applicable, earlier mark)

FRUIT


- leather and imitations of leather, goods made of these materials and not included in other classes (18)


- tissues (piece goods), bed and table covers, textile articles not included in other classes (24)


- clothing, footwear, headgear (25)

Comment

The GC upheld the BoA’s decision in revocation proceedings brought under Art 51(1)(a), that use of the mark FRUIT OF THE LOOM did not constitute use of the mark FRUIT.


The GC ruled that the BoA had correctly concluded that the three words “of the loom” were such as to alter the distinctive character of the FRUIT mark, creating a unique expression. Therefore, use of FRUIT OF THE LOOM did not constitute genuine use of the mark FRUIT under Art 15(1)(a). This conclusion was not affected by the presence of a figurative element depicting fruit in Fruit of the Loom’s figurative marks.

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Interpretation of the specification of goods and services in trade mark registrations


Chartered Institute of Patent Attorneys v Registrar of Trade Marks (CJ (Grand Chamber); C-307/10; 19.06.12)


CIPA applied to register a UK trade mark for the word mark IP TRANSLATOR for “Education; providing of training; entertainment; sporting and cultural activities”. This constituted all of the general indications of the class heading of Class 41 of the Nice Classification. The Registrar interpreted this specification in line with Communication 4/03 (see below) and therefore found that it covered all services within Class 41, including translation services. This application was therefore rejected on the basis that the word mark IP TRANSLATOR was descriptive and non distinctive in respect of translation services.


Communication 4/03 of the President of OHIM of 16 June 2003 (now repealed) stated that, when defining the scope of a trade mark’s specification:


(1) OHIM does not object to the use of any of the class headings as being too vague and indefinite;


(2) the use of all the general indications in the class headings of a particular class constitutes a claim to all the goods or services in that class; and


(3) the use of one of the general indications in the class headings covers all of the individual goods or services falling within that classification.


CIPA appealed to the Appointed Person (Geoffrey Hobbs QC) and contended that (following the previous UK practice) its registration did not specify, and therefore did not cover, translation services in Class 41. Noting the divergence in practice the Appointed Person made the following reference to the CJEU in the context of the Trade Mark Directive:


(1) Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision?


(2) Is it permissible to use the general indications of the Nice Classification for the purpose of identifying the various goods or services covered by a trade mark application?


(3) Is it necessary or permissible for such use of the general indicators to be interpreted in accordance with Communication No. 4/03?


The Court ruled as follows:


(1) The goods and services for which the protection of a trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.


(2) It is permissible to use the general indications for the purpose of identifying the goods and services covered by a trade mark application, provided that such identification is sufficiently clear and precise. The Court found (without giving examples) that some such general indications are, in themselves, sufficiently clear and precise; however others are not where they are too general and cover goods or services which are too variable.


(3) Where an applicant uses all the general indications of a particular class (such as in the application for IP TRANSLATOR), the application must specify whether it is intended to cover all of the goods or services included in that class. If the application concerns only some of those goods or services, the applicant is required to specify those goods or services.


It was therefore for the Appointed Person to determine whether CIPA specified in its application whether or not it intended to cover all of the services in Class 41, and in particular, whether or not the application was intended to cover translation services.


Note: following this judgment Communication 4/03 was repealed and replaced by Communication 2/12 of the President of OHIM dated 20 June 2012. Communication 2/12 repeats the guidance of the CJEU outlined above in respect of Community Trade Marks, and confirms that a literal approach to interpretation will be used. 


With regard to trade marks registered or applications filed before the coming into force of Communication 2/12 in which all the general indications of a class were used, OHIM considers that the intention of the applicant was to cover all of the goods and services included in the alphabetical list of the relevant class.


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Parallel imports

Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd* (Lords Walker, Clarke, Sumption, Reed & Carnwath; [2012] UKSC 27; 27.06.12)


The Supreme Court allowed Oracle’s appeal against an order of the Court of Appeal (reported in CIPA Journal, September 2010) and restored the order of Kitchin J granting summary judgment in favour of Oracle (reported in CIPA Journal, December 2009).


Oracle brought trade mark infringement proceedings against M-Tech for the importation into the UK from the USA of 64 disk drives. The trade marks were not exhausted as the goods had originally been put on the market in China, Chile and the USA. Oracle was alleged to have declined to supply information which would enable independent resellers to discover whether any particular equipment was first put on the EEA market by or with its consent.


Lord Sumption (giving the judgment of the Court) identified the fundamental question on the appeal to be whether EU law could support the contention that Article 5 was subject to an implied limitation to be derived as a matter of construction from Articles 34 to 36 of the Treaty on the Functioning of the European Union (the “EU Treaty”). However, it was not enough for M-Tech to establish a breach of the EU Treaty; it had to show that any such breach gave it a defence to an action for trade mark infringement. 


The Court held that the case law of the CJEU (originating from Tedeschi v Denkavit Commerciale Srl (Case 5/77)) reflected the general rule that where a particular area of commercial activity engaging the principle of the free movement of goods was regulated by harmonising legislation of the EU, then that legislation superseded the general provisions of Articles 34 to 36 of the EU Treaty. Furthermore, the scheme of Articles 5 and 7 already embodied both the primary provisions governing the free movement of goods in Articles 34 and 35, and the limited exception in Article 36 for the protection of industrial and commercial property. Lord Sumption said that Article 5 was not qualified by the EU Treaty because it did not need to be; the reconciliation between Article 5 and Articles 34 to 36 of the EU Treaty was achieved by Article 7, as the rights derived from Article 5 were exhausted under Article 7(1) as soon as the goods were first put on the market in the EEA by, or with the consent of, the trade mark proprietor. Thereafter, subject to Article 7(2), which provided for the proprietor to retain control where there were ‘legitimate reasons’ for doing so, the proprietor had no subsisting rights capable of engaging the prohibition of restrictions on trade between Member States. 


The Court considered that M-Tech did not have a defence, mainly because the goods in question were never marketed in the EEA until they were imported and marketed there by M-Tech. Oracle had the right to control the first marketing of the goods in the EEA and could not be prevented from doing so merely because it withheld information about the provenance of its goods. Although the Court recognised that M-Tech may have had a cause of action against Oracle under Articles 34 to 36 of the EU Treaty for damages in respect of Oracle’s policy of withholding information about the history of its goods, the present proceedings were only concerned with business which M-Tech had done in infringement of Oracle’s marks. It was not a defence to such proceedings that there was other business which M-Tech had been prevented from doing by Oracle’s arguably unlawful policy of withholding information.


The Court declined to make a reference to the CJ. The appeal was allowed.






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Honest concurrent use


Budejovicky Budvar Narodni Podnik (“BB”) v Anheuser-Busch Inc (“AB”)* (Ward LJ, Warren J & Sir Robin Jacob; [2012] EWCA Civ 880; 03.07.12)


Following the judgment of the CJ in respect of the questions referred to it in the long running dispute concerning the BUDWEISER trade mark (reported in CIPA Journal, October 2011), the Court of Appeal allowed BB’s appeal on the basis that there was no adverse affect on the essential function of AB’s mark during the long period of honest concurrent use of the parties’ marks. 


BB and AB both marketed their beers in the UK using the word sign BUDWEISER or expressions including that sign, and had done so since 1973 and 1974 respectively. Both parties applied to register the word BUDWEISER for ‘beer, ale and porter’; AB in 1979 (which BB opposed) and BB in 1989 (which AB opposed). In February 2000, the Court of Appeal, applying the Trade Marks Act 1938 which allowed concurrent registration of identical or confusingly similar marks in circumstances of honest concurrent use, dismissed both oppositions and allowed both parties to register BUDWEISER. BB and AB were subsequently both entered on the Trade Marks Register as proprietors of the BUDWEISER word mark on 19 May 2000. 


Four years and 364 days after registration of the BUDWEISER marks, AB applied to the Trade Marks Registry for a declaration of invalidity of BB’s mark on the basis that AB’s mark was the earlier mark as its application for registration was made earlier than BB’s application; the marks and the goods were identical so AB, as proprietor of the earlier mark, was entitled to a declaration that BB’s mark was invalid by virtue of Article 4(1)(a); and there was no acquiescence because the five year period provided for in Article 9(1) had not expired. The Trade Marks Registry allowed the application and this decision was upheld on appeal by BB to the High Court. BB appealed to the Court of Appeal which stayed the proceedings pending answers to the questions referred for a preliminary ruling on the concept of acquiescence in Article 9(1) and the interpretation of Article 4(1)(a) and its compatibility with the doctrine of honest concurrent use (reported in CIPA Journal, April 2008).


BB accepted that the response from the CJ ruled out any defence of acquiescence, and the Court of Appeal (Sir Robin Jacob giving the lead judgment) did not address this further.


On honest concurrent use, the CJ had held that the proprietor of an earlier mark could not obtain the cancellation of an identical later trade mark designating identical goods where there had been a long period of honest concurrent use of those two marks where that use neither had, nor was liable to have, an adverse effect on the essential function of the trade mark. In assessing whether there had been harm to the essential function of AB’s mark, the Court of Appeal found that the level of confusion found in the earlier cases was small but clearly not negligible. The CJ had not ruled that only de minimis levels of confusion were acceptable where there was honest concurrent use, nor had the CJ ruled that the inevitable confusion in a same mark/same goods case was enough to take a case out of acceptable concurrent use. The Court of Appeal held that there was no impairment of the guarantee of origin of either party’s mark, as the guarantee was different given a situation of long established honest concurrent use.


The Court of Appeal held that AB was unable to rely on the fact that it had not been necessary to establish an adverse effect on the essential function under Article 5(1) when it had pleaded its case. It had been clear that honest concurrent use was somehow in play and it had been open to AB to reply by alleging that the essential function had been adversely affected, but it had not done so. Warren J added that although he agreed with Sir Robin Jacob, he did not consider that it would be unjust to allow AB to amend its pleading and to adduce further evidence. However, he agreed that it was now too late for AB to outline the evidence it would have wished to adduce.


BB’s appeal was allowed.



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DATABASE RIGHTS


AG considers location of the act of re-utilisation


Football Dataco Ltd & Ots v Sportradar GmbH & Anr (AG Villalón for the CJ; C-173/11; 21.06.12)


AG Villalón has given an opinion that where a party which operates a server located in one Member State sends data protected by “sui generis” database rights (Article 7(1) of the Database Directive (96/9/EC)) to a user situated in another Member State, in response to the request of that user, the act of sending the information constitutes a “re-utilisation” within the meaning of Article 7(2)(b) of the Database Directive.


He stated that the term “re-utilisation” includes the chain of acts which start with the data being sent from the server and culminates in users having access to the data sent. In his opinion this act of “re-utilisation” occurs in all member states where a necessary part of that chain occurred.


Facts
Football Dataco and the other Claimants between them administered football in certain English and Scottish leagues and marketed the data (i.e. goals, red cards, yellow cards etc) in such matches. This data was compiled and maintained in the “Football Live” database.  The data was both updated and provided to third parties while matches were taking place. The Defendants (“Sportradar”) were a German and Swiss company that provided data relating to sports events to customers, such as betting and media customers.


Football Dataco brought an action against Sportradar in the English High Court alleging that Sportradar had infringed its database rights by extracting data from “Football Live” and providing it to Sportradar customers.


Sportradar challenged the jurisdiction of the English Court on the basis that it did not have jurisdiction to hear the case given it was based in Germany. The English High Court declared that it had jurisdiction to hear the claim in so far as it sought to establish joint liability of Sportradar with users who accessed its website in the UK, but that it did not have jurisdiction to hear the claim in so far as it sought to establish primary liability on the part of Sportradar. Both parties appealed to the Court of Appeal which referred the following question to the CJEU:


Where a party uploads data from a database protected by sui generis right under the Database Directive onto that party’s web server located in Member State A and in response to requests from a user in another Member State B the web server sends such data to the user’s computer so that the data is stored in the memory of that computer and displayed on its screen.


(a) is the act of sending the data an act of “extraction” or “re-utilisation” by that party?
(b) does any act of extraction and/or re-utilisation by that party occur
 (i) in A only?
 (ii) in B only?
 (iii) In both A and B”?


Classification of the act of sending
The AG considered that the answer to the first question followed from the rule established by the CJEU in recent cases; particularly British Horseracing Board and others (Case C-304/07). In that case the CJEU ruled that the terms “extraction” and “re-utilisation” referred to any act of appropriating and making available to the public without the consent of the maker of the database the results of his investment.


The act of sending to a user’s computer, upon his request, information obtained from a database protected by the sui generis right formed a necessary constituent part of a process of making available to the public. In accordance with the rule established in British Horseracing Board, this constituted a “re-utilisation” within the meaning of Article 7(2) of the Database Directive. In the context of communication via the internet, “re-utilisation” could only be understood as a complex act made up of actions needed to produce the effect of “making available” which in the language of the directive itself, comprised “re-utilisation”. Since the act of sending by Sportradar was one of the necessary component parts of “making available” it must be regarded as a “re-utilisation”.


The AG considered that each of the complex chain of actions resulting in “making available” was in and of itself capable of classification as an act of “re-utilisation” since each of those actions was meaningful only as a constituent part of that complex act and, therefore, necessarily shared the classification.


Location of the act of re-utilisation
In determining the question of the relevant location the AG considered each party’s view of one of the two traditional communication theories. Sportradar proposed the “emission theory” should be applied, which said that the act of “re-utilisation” was performed at the location of the Sportradar server from which the information was sent. Football Dataco preferred the “transmission” or “reception” theory which said that the “re-utilisation” took place in the UK, where the users accessed the information.


The AG stated that he did not find it useful, in the context of the internet, to employ concepts formulated in the context of broadcasting. The networked configuration of a global communications medium rendered the meaning of traditional concepts highly ambiguous. In this context the CJEU had previously found a suitable criterion in the idea of the intended target of information on the internet. It had applied that criterion in L’Oreal v eBay Case C-324/09 and Pammer and Hotel Alpenhof Case C-144/09.


In answering the question of location the phrase “making available to the public” was the essential conceptual key. On that basis “re-utilisation” included the collection of acts which started with the sending of data from Sportradar’s server and ended with the acts performed by those users having access to the data sent. This “re-utilisation” was the sequential succession of a number of acts having as their purpose the “making available” of certain data via the internet. The AG concluded that the place of the “re-utilisation” was where each of the acts needed to produce the result occurred. Consequently “re-utilisation” occurred in each and every Member States in which a necessary act in the chain occurred.



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Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Abby Minns, Anna Stanley, David Egan, Heather Randles, Nick Boydell, Nisrin Adelin, Toby Sears and Zoe Fuller.


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