IP Case Report for November 2012

01 November 2012

Katharine Stephens, Zoe Fuller, Hillary Atherton

We report on the Court of Justice's decisions on re-utilisatation of database contents in Football Dataco v Sportradar and on the nature of the "informed user" for design cases in Herbert Neuman v Jose Baena Group. We also report on the decision of the Court of Appeal in Samsung v Apple concerning Registered Community Designs, and on the decision of the High Court in Starbucks (HK) Ltd v BSkyB.

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Decisions of the GC


Mustafa Yilmiz v OHIM; Tequila Cuervo, SA de CV

Application (and where applicable, earlier mark)

- tequila, tequila liquers, alcoholic cocktails containing tequila, all originating in Mexico (33)


- beers, non alcoholic drinks (32)
(German and International marks)


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

While beer and the goods applied for belonged to the same general category of alcoholic beverages, they differed in their ingredients, method of production, colour, smell, taste and location in supermarkets.
The goods associated with the respective marks also differed in purpose: while beer quenches thirst, the alcoholic beverages applied for generally did not. As a result, consumers did not perceive the products to be similar or even complementary in nature. Further, there was a significantly lower degree of competition between the goods than found between beer and wine in Mezzopane, (Case T-175/06, reported in CIPA Journal, July 2008).

Given that the goods at issue were not similar, the BoA correctly concluded that there was no likelihood of confusion without the need to rule on the similarity or identity of the signs.



Bial-Portela & Ca, SA v OHIM; Isdin SA

Application (and where applicable, earlier mark)


- cleaning preparations, soaps, perfumery, cosmetics, dentifrices (3)
- pharmaceutical and veterinary preparations, fungicides, herbicides (5)


- cleaning preparations, soaps, perfumery, cosmetics, dentifrices (3)
- pharmaceutical and veterinary preparations, fungicides, herbicides (5)

(Community mark)


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

Contrary to the BoA’s finding, the GC held that the marks were visually similar, as the visual differences created by the central and the end parts of the marks (‘inix’ and ‘exir’) were not sufficient to cancel out the impression of similarity created by the first part, common to both marks (‘zeb’).

The BoA also erred in concluding that there was no phonetic similarity. In fact, there was a certain level of similarity, given both marks were composed of three syllables, and the first syllable was identical.

Neither sign had a meaning in the relevant languages, therefore a conceptual comparison was not relevant.
As the goods were normally on display in supermarkets and were chosen by consumers after a visual examination, the visual similarity was considered to be especially important. There was therefore a likelihood of confusion between the marks.




Bimbo SA v OHIM; Panrico SA

Application (and where applicable, earlier mark)


- pastry and bakery products, specially doughnuts (30)


- all kinds of confectionary and pastry products, sugar, chocolate, tea, cocoa, candy, chewing gum tablets and biscuits (30)

(Spanish mark)


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

The GC confirmed the BoA’s finding that ‘doughnuts’ did not lack distinctive character, as a large part of the public (the relevant Spanish public) would not understand the word. Therefore, the ‘doughnuts’ element of the mark applied for should be taken into account in the global comparison.

The BoA was correct in finding an average degree of visual similarity between the marks and a medium degree of phonetic similarity. A conceptual comparison was not possible. Given these findings and the identity of the relevant goods, the GC held that there was a likelihood of confusion between the marks.

In reaching its decision, the GC rejected Bimbo SA’s criticism of the survey evidence which was based on a visual inspection of the mark without it being spoken out loud to the interviewees. As the relevant goods were often bought on sight, the survey method chosen reflected what occurred in practice.



Lancôme parfums et beauté & Cie v OHIM; Focus Magazin Verlag GmbH

Application (and where applicable, earlier mark)


- cosmetic and make-up preparations (3)


- make-up, cosmetics (3)

(Community Mark)


The GC confirmed the BoA’s decision to invalidate the mark under Arts 53(1)(a) and 8(1)(b).

Lancôme did not dispute the BoA’s findings that the relevant goods were identical and that the marks were visually and phonetically similar overall. For the conceptual comparison, Lancôme had failed to submit adequate evidence to establish that the combination of the terms ‘color’ and ‘focus’ carried a brand message that was different from the message carried by one of the terms alone. Therefore the marks were conceptually similar.

Lancôme had also failed to show that (i) the coexistence of the two marks in the marketplace had not led to confusion; and (ii) the application for a declaration of invalidity was abusive on the basis that Focus Magazin had registered the earlier mark with no intention to use it.


OHIM bound by letters sent in error

Jager & Polacek GmbH v OHIM (CJ (Second Chamber); C-402/11; 18.10.12)

The CJ set aside the GC’s judgment and annulled the BoA’s decision, concluding that OHIM was bound by letters it had sent to the parties in error. These letters confirmed that an opposition brought by Jager & Polacek was admissible, stated when the contentious part of the proceedings was to commence and fixed periods for filing evidence, despite the opposition fee not be paid in time.

Under Rule 18(1) of CTM Regulation No. 2868/95, the opposition proceedings (the inter parties stage) commence only when OHIM has verified that the opposition is admissible. The GC was incorrect to hold that the letters did not constitute the adoption by OHIM of a definitive position on the admissibility of the opposition. It was open to the defendant in the opposition proceedings to seek an annulment, under Article 58, of the finding that the opposition was admissible. Further, under Article 80, OHIM is able to revoke a decision containing an obvious procedural error. Neither of these routes had been taken, rather the applicant for registration had written to OHIM pointing out that the opposition fee had not been paid in time and OHIM sent a letter headed ‘Correction’ stating that the opposition had not been duly entered.

Under Article 61 of the Statute of the Court of Justice of the European Union the CJ gave final judgment in the case, annulling the BoA’s decision and concluding that the letters constituted a decision on the admissibility of the opposition which could be revoked only in accordance with the conditions laid down in Article 80 or annulled in an appeal brought under Article 58.


Genuine use of a mark which differs from a registered mark but which differences do not alter the distinctive character

Bernhard Rintisch v Klaus Eder (CJ (Third Chamber); C-553/11; 25.10.12)

The CJ held that there could be genuine use of a mark where the actual mark used differed from the mark as registered without altering the distinctive character of that trade mark, even where the different form of the mark was also registered. Article 10(2)(a) of Directive 89/104 (now Article 10(1)(a) Directive 2008/95) did not preclude reliance on such use to prove genuine use of the original trade mark.

Mr Rintisch was the proprietor of the earlier trade marks PROTI, PROTIPLUS and PROTI POWER for protein-based products. Mr Rintisch brought invalidity proceedings against Mr Eder’s later registered trade mark for PROTIFIT for food supplements, vitamin preparations and dietetic foodstuffs. The invalidity proceedings primarily relied on the PROTI mark and in the alternative PROTIPLUS and PROTI POWER. The German Court held that the PROTIPLUS and PROTI POWER marks had been genuinely used and such use was use in a form that did not alter the distinctive character of the PROTI mark.

The German Federal Court of Justice (Bundesgerichtshof) referred questions to the CJ that essentially asked whether Article 10(1) and (2)(a) of Directive 89/104 precluded a rule where use of a mark must be presumed even where it was used in a form differing in a non-distinctive way from the mark as registered and if the trade mark in the form used was also registered. If this was answered in the affirmative, then the Court asked if there was no relevant use of the original trade mark if the other trade mark was registered.

The German Court also asked whether Article 10(2)(a) applied to ‘defensive’ trade marks, which had been registered to secure or expand the protection of another registered trade mark.

The CJ held that there was nothing in the wording of Article 10(2)(a) to preclude the proprietor of a registered trade mark from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark. The underlying purpose of Article 10(2)(a) was to avoid an overly strict requirement that genuine use of a mark required use of the exact mark as registered rather allowing for commercial use of a mark in a form that did not alter the distinctive character of the mark.

This was not at odds with the decision in Il Ponte Finanziara v OHIM (Case C-234/06, reported CIPA Journal, October 2007) where the CJ held that to demonstrate a likelihood of confusion with a family or series of marks it was necessary to show that a sufficient number of trade marks of the family was present on the market.

The CJ also held that regarding the question about ‘defensive’ marks, there were no grounds for interpreting Article 10(2)(a) in such a way that it would be inapplicable to such marks since the subjective intentions of the trade mark proprietor applying for a trade mark was wholly irrelevant to the scope of protection of that mark.


Starbucks fails to stop Sky’s use of NOW TV

Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ots* (Arnold J; [2012] EWHC 3074 (Ch); 02.11.12)

Arnold J held that Starbucks’ CTM was invalid, and that even if it were valid, Sky had not infringed it. The Judge considered that if the CTM were valid and Sky’s use was within Article 9(1)(b), Sky would not have a defence under Article 12(b). Starbucks’ claim for passing off also failed.

Starbucks was part of a Hong Kong based-based group of broadcasting, media and telecommunications companies. Sky was the well-known broadcasting and telecommunications company. Starbucks claimed that Sky’s use of the name NOW TV in relation to its newly launched standalone internet protocol television service infringed its CTM and amount to passing off. Sky counterclaimed under Article 7(1)(b) and (c) for invalidity of Starbucks’ CTM which was registered for, among other things, radio and television services and broadcasting and transmission of radio and television programmes in Class 38. Starbucks’ CTM is shown below:

The three signs used by Sky of which Starbucks complained were NOW TV, NOWTV.com and the following logo:

Validity of the CTM

Arnold J concluded that the CTM was precluded from registration by Article 7(1)(c) in relation to the services in issue because NOW would be understood by the average consumer as a description of a characteristic of the service, namely its instant, immediate nature. The figurative elements of the CTM did not affect this conclusion. In the alternative, the Judge concluded that if the inclusion of the figurative elements meant that the CTM did not consist exclusively of the unregistrable word NOW, then the CTM was devoid of distinctive character and therefore unregistrable by virtue of Article 7(1)(b). Arnold J commented that trade mark registries should be astute to the consequence of registering descriptive marks under the cover of a “figurative figleaf of distinctiveness”, i.e. that owners would inevitably seek to enforce such marks against signs which did not include the figurative elements or anything like them.

Infringement under Article 9(1)(b)

The Judge went on to say that even if the CTM was valid, it would not be infringed because any distinctive character would be solely attributable to the figurative elements. None of Sky’s signs included anything like the figurative elements of the CTM and it followed that there would be no likelihood of confusion.

Sky’s defence to infringement under Article 12(b)

Arnold J considered that, had the CTM been valid and infringed by Sky, Sky would not have been saved by Article 12(b). The use complained of was squarely as a trade mark for Sky’s services and Sky had been aware of Starbucks’ objections prior to launch. Therefore, such use would amount to unfair competition, and use not in accordance with honest practices.

Passing off

Although Starbucks had, from 2000-2002, offered an internet television service which had been made available to global consumers via a website located at www.now.com, the Judge held that there was insufficient evidence to show continued goodwill in March 2012 (the date of inception of the use complained of).

Starbucks had also licensed use of the CTM in relation to a fixed wireless broadband service which had been offered to customers in parts of the UK since 2005. Arnold J found that there was some residual goodwill, limited to those specific services, but that there was no likelihood of confusion amongst a substantial number of people. This was due to, among other things, the modest extent of the goodwill, the fact that neither name was strongly distinctive, the differences between the names and the overall context of Sky’s use of the name NOW TV. Furthermore, the Judge accepted that it was a well-known statement of principle that a greater degree of discrimination could fairly be expected from the public where a trade name consisted wholly or in part of words descriptive of the articles to be sold or the services to be rendered (Office Cleaning Services Ltd v Westminster Window and General Cleaners (1943) 63 RPC).

Starbucks had also provided a closed circuit internet protocol television service under the NOW name in Hong Kong since 2003. Although it was not possible to receive the service in the UK, it had been accessible in the UK via Starbuck’s websites, YouTube, and as video-on-demand on various international airlines. Referring to Plentyoffish Media Inc v Plenty More LLP [2011] EWHC 2568 (Ch), Arnold J considered that the service had acquired some modest reputation in the UK, but that the mere accessibility of material in the UK via websites did not give rise to a protectable goodwill. While it was not necessarily a bar to the claim that the service was free, the Judge concluded that the commercial reality was that the service was provided in Hong Kong, not in the UK, and that making programme content available via YouTube, its websites and on airlines was intended to promote the service by encouraging people to subscribe in Hong Kong. Starbucks’ customers were its viewers in Hong Kong and not viewers in the UK. Accordingly, there was no goodwill in the UK. Starbucks’ passing off claim therefore failed.


RUUKKI mark declared invalid but only in relation to the furniture trade

Rautaruukki Oyj v Ruukki Group Oyj & Ots* (Floyd J; [2012] EWHC 2920 (Ch); 23.10.12)

Floyd J allowed in part Rautaruukki’s appeal from a decision of the hearing officer that its mark RUUKKI was invalid, holding that Ruukki Group’s notional passing off action under Section 5(4) would succeed, but only insofar as it related to goods and services used in the furniture trade.

Rautaruukki was a metal based construction industry and engineering solutions provider and provider of metal products. It had existed in the UK since 1981 under the name RAUTARUUKKI but had marketed itself as RUUKKI since 2004. Ruukki Group started shipping wood products to the UK in 1995 under the mark RUUKKI WOOD. The products were edge-glued pine boards and pine furniture components.

The Judge held that the hearing officer was entitled to declare the mark invalid for goods and services in the furniture manufacturing trade. Although he did not have direct evidence from the trade about the likelihood of confusion, the goods were complementary and the marks were highly distinctive. However, in relation to goods outside the furniture manufacturing trade, there was insufficient evidence to show a real likelihood of misrepresentation. Here, the absence of direct trade evidence was a significant obstacle for Ruukki Group, as they were unable to show why someone who knew of the reputation and goodwill generated by Ruukki Group in relation to the supply of wooden boards to the furniture trade would assume that the use of the mark in relation to metal goods not used in the furniture trade came from the same source.

The Judge dismissed Ruukki Group’s cross-appeal under Section 3(6). Although Rautaruukki’s application for the RUUKKI mark had been converted from a CTM application, the hearing officer was correct to treat Ruukki Group’s bad faith objection as being a bad faith objection to the application for a UK mark. The converted application was an application for the monopoly conferred by a UK mark, and not the wider monopoly conferred by a CTM.


Applications to amend statements of case in the PCC

Redd Solicitors LLP v Red Legal Ltd & Anr*; (Judge Birss; [2012] EWPCC 50; 10.10.12)

In proceedings for trade mark infringement brought by a firm of solicitors (Redd), against a conveyancing company (Red Legal), Judge Birss refused Red Legal’s application to add new parts to its bad faith ground of attack on the validity of one of Redd’s UK trade marks. The application had not been made at the CMC and the case was five weeks from trial. The Judge considered that CPR 63.23(2) was intended to be a substantial hurdle which was not satisfied in the present case as the allegations sought to be raised were extremely weak and failed the cost-benefit test.



Re-utilisation of database contentFootball Dataco & Ots (“Dataco”) v Sportradar GmbH & Anr (“Sportradar”) (CJ (Third Chamber); C-173/11; 18.10.12)

The CJ has provided a ruling on questions referred to it by the Court of Appeal concerning re-utilisation of data under Article 7 of the Database Directive 96/9/EC.

Dataco and the other claimants between them administered football competitions 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 updated and provided to third parties while matches were taking place.

The defendants (Sportradar) were German and Swiss companies that provided data relating to sports events to customers, such as betting and media customers. Dataco brought proceedings 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. The English High Court held 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 not in so far as it sought to establish primary liability on the part of Sportradar. Both parties appealed to the CoA which referred a two part question to the CJ (reported in CIPA Journal, April 2011).

Part (a)-classification of the act of sending data

In reaching this decision, the CJ held that Article 7 must be interpreted as meaning that the sending by one person, by means of a web server located in Member State A, of data previously uploaded by that person from a database protected by the sui generis right under the Database Directive to the computer of another person located in Member State B, at that person’s request, for the purpose of storage in that computer’s memory and display on its screen, constitutes an act of ‘re-utilisation’ of the data by the person sending it.

The CJ considered British Horseracing Board and others (Case C-203/02 reported in CIPA Journal, December 2004) which interpreted the concept of “re-utilisation” as extending to any act of distribution to the public of the whole or a part of the contents of a database. The CJ stated that distribution would cover the act of sending data that had previously been extracted from a database via a web server to another person’s computer, at that person’s request. By such a sending, that data is made available to a member of the public.

Part (b)-location of the act of re-utilisation

The CJ held that act of re-utilisation takes place, at least, in Member State B, where there is evidence from which it may be concluded that the act discloses an intention on the part of the person performing the act to target members of the public in Member State B, which is for the national court to assess.

The CJ noted, as AG Villalón had pointed out in his opinion (reported in CIPA Journal, July 2012), that re-utilisation was characterised by a series of successive operations. However, given the ubiquitous nature of the content of a website, one must take into account that such a method of making material available to the public is different to traditional methods of distribution because websites could be consulted instantly by an unlimited number of internet users throughout the world.

Therefore, the mere fact of accessibility of website content in a particular member state did not mean that the website operator was performing acts of re-utilisation within that state. If this were the case, then the website operators and data providers of websites and data that were clearly targeted at people outside of the member state concerned would nonetheless be subject to the relevant law of that state and this could not be correct.

In the present case, the CJ stated that the national court would need to look at whether there was any evidence to suggest that Sportradar’s acts of sending data proceeded from an intention to attract the interest of the UK public.

Differing from the AG’s conclusion that infringement proceedings could be brought in any country where an act in the chain of re-utilisation takes place, the CJ ruled that re-utilisation occurred in the place where the data was received and only if the claimant was able to show that the defendant intended to target users in the country where the data was downloaded.


Joint liability for breach of confidence, trade mark infringement and infringement of database rights

British Sky Broadcasting Group Plc (“BSkyB”) & Ots v Digital Satellite Warranty Cover Ltd (In Liquidation) (“DSWCL”) & Ots* (Sir William Blackburne; [2012] EWHC 2642 (Ch); 01.10.12)

Sir William Blackburne found Mr Freeman, Mr Sullivan and Mr Marrow jointly liable for breach of confidence, infringement of BSkyB’s database rights, trade mark infringement and passing off, which Arnold J had previously found had been committed by DSWCL and a second corporate defendant, Nationwide Digital Satellite Warranty Cover Ltd (together, the “Corporate Defendants”) (reported in CIPA Journal, December 2011). A fourth defendant, Mr Lee, was found liable for misuse of confidential information, infringement of database right and breach of his employment contract with BSkyB.

Mr Freeman, Mr Sullivan and Mr Marrow were between them the registered holders and/or equal beneficial owners of the issued shares in the Corporate Defendants. Mr Freeman was the sole director of the Corporate Defendants and Mr Sullivan was the company secretary of both companies. On the evidence, Sir William Blackburne found that Messieurs Freeman, Sullivan and Marrow had each intended, procured and shared in a common design that the various infringing acts should occur.

Although the point did not arise given the Judge’s findings, he indicated that he would have held that the term “the public” in the phrase “any form of making available to the public” contained in Article 7(2) of the Database Directive included making available the contents of Sky’s database to Mr Sullivan and/or DSWCL. The test was whether the distribution to the “public” in issue was an act which would harm Sky’s investment in creating the database in question. The Judge also considered that copying data from one form of electronic storage to another “obviously” constituted “extraction” within the meaning of Article 11.


The nature of the ‘informed user’

Herbert Neuman & Ots v Jose Baena Grupo, SA (CJ (Sixth Chamber); Joined Cases C-101/11 and C-102/11; 18.10.2012)

The CJ rejected appeals in joined cases concerning the validity of a RCD under Articles 25(1)(b) and 6(1) of the Community Designs Regulations 6/2002.

Baena Grupo owned the RCD reproduced below for t-shirts, caps, stickers and printed matter, including advertising materials.

Mr. Neuman and Mr Galdeano del Sel applied to have the design declared invalid on the basis of the earlier 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 (reported in CIPA Journal, January 2011).

The CJ dismissed the appeals.

When considering the parties’ submissions that the GC erred in basing the comparison on the imperfect recollection of the informed user rather than a direct comparison of the silhouettes at issue, the CJ acknowledged that while the CDR did not contain a definition of the ‘informed user’, the concept fell somewhere between an average consumer who lacked specific knowledge, and a sectoral expert. The informed user was not a user of average attention, but a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question. The CJ noted that the very nature of the informed user meant that, when possible, he will make a direct comparison between the earlier mark and the contested design. However, the CJ accepted that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the items which the earlier mark and the contested design represent. Therefore the GC had not erred by basing its reasoning on the informed user’s imperfect recollection of the overall impression produced by the two silhouettes, rather than carrying out a direct comparison of the silhouettes.


Court of Appeal upholds ‘not as cool’ judgment

Samsung Electronics (UK) Ltd v Apple Inc* (Longmore & Patten LJJ & Sir Robin Jacob; [2012] EWCA Civ 1339; 18.10.12)

The Court of Appeal dismissed Apple’s appeal against Judge Birss’ decision in the High Court that Samsung’s “Galaxy” models of tablet computer did not infringe Apple’s Registered Community Design (“RCD”) for its “iPad” device (reported in CIPA Journal, August 2012). The Court also dismissed Appeal’s appeal against Judge Birss’ order that Apple be compelled to publicise the fact that it had lost the infringement proceedings. However, the Court of Appeal varied the publicity order to allow Apple to (i) provide a link to the notice from its homepage rather than placing the notice on the homepage itself, and (ii) display the notice for a period of one month rather than six.

The Court of Appeal (Sir Robin Jacob giving the lead judgment) held that Judge Birss had not erred in his assessment of a different overall impression to the informed user. Although the Judge had had to go through a “verbalised list of features” identified by Apple, he had clearly been aware of the need to consider the overall impression of the design as it would strike the informed user, bearing in mind both the design corpus and the extent of design freedom. Samsung’s products and Apple’s RCD are shown below:

Apple’s RCD:

Samsung’s Galaxy tablet:

Design restraint

Judge Birss had been entitled to find, in overall terms, that for a hand-held tablet: (i) one needed a flat transparent screen; (ii) rounded corners were unremarkable and had some obvious functional value; and (iii) one needed a border of some sort for functional reasons. Although there was some design freedom as regards ornamentation, the rim, and the overall shape (rectangular or with some curved sides), such freedom was limited. The screen itself was something with which the informed user would be familiar, and each of these findings had been a proper assessment of the degree of design freedom.

Design corpus

It was immaterial that Judge Birss had referred to a “family” of designs having similar fronts. As to the sides, the Court of Appeal agreed that the Samsung products were very different to those of the Apple RCD which Judge Birss had described as having a “crisp edge”. As for the back and sides, Judge Birss had if anything been too favourable to Apple in finding that Samsung’s tablets were of the same “family”. The Court of Appeal took the view that there was a real design difference between Apple’s sharp edge and vertical side followed by a nearly circular arc of rounding, and each of Samsung’s products. The Court also agreed that the backs of Samsung’s products were altogether busier. Importantly, it found that the Judge would have been wrong if he had not held that the informed user would consider the relative thinness of Samsung’s products as forming a significant part of the overall impression.

The Court of Appeal added that if Apple’s RCD had a scope as wide as Apple contended, it would foreclose much of the market for tablet computers, as alterations in thickness, curvature of the sides, embellishment and other features would not be sufficient to prevent infringement. As such, legitimate competition would be stifled.


The Court of Appeal had no doubt that the court had jurisdiction to grant a publicity order in favour of a non-infringer who had been granted a declaration of non-infringement. Whether or not it should, would depend on whether there was a real need to dispel commercial uncertainty. Given the wide publicity afforded to Judge Birss’ “not as cool” judgment, the Court of Appeal found that there would not have been a need for such an order if the German Court of Appeal had not granted a pan-European interim injunction against Samsung subsequent to Judge Birss’ final decision. However, that injunction had created real commercial uncertainty and a publicity order was therefore appropriate in the circumstances.

Given Apple’s concern to keep its homepage “uncluttered”, the Court agreed to vary the order, permitting it to add a link to the publicity notice on its homepage. The Court also agreed to reduce the period for which the link should appear to one month, in light of Apple’s undertaking to obtain a discharge of the order of the German Oberlandesgericht.


Apple ordered to change publicity statement

Samsung Electronics (UK) Ltd v Apple Inc* (Longmore & Kitchin LJJ & Sir Robin Jacob; [2012] EWCA Civ 1430; 09.11.12)

The Court of Appeal (Sir Robin Jacob again giving the lead judgment) accepted Samsung’s complaint that Apple had not complied with, nor achieved the intended effect of, the Order requiring it to publicise the outcome of the design infringement proceedings in which it had been unsuccessful.

Apple’s website

Apple had published a notice on its website which was a mixture of the notice which the Court had ordered along with material which Apple itself had added. The Court considered that the Order had not precluded additions to the required notice provided they were true and did not undermine the intended effect of the notice. However, the published notice included inaccurate statements and false innuendo which had given rise to inaccurate reporting of the design infringement proceedings by journalists.

Newspapers and magazines

Although the Order made on 18 October 2012 required publication “in the earliest available issue” of the specified newspapers and magazines, the notices did not appear until 16 November. The Court held that this was a further breach of the Order.

Form of the Further Order

The Court ordered Apple to publish an unamended notice on the homepage of its website until 15 December 2012, making it clear that the previous contested notice was inaccurate and did not comply with the first order. The Court refused Apple’s request for 14 days to comply with the Further Order for technical reasons, allowing 48 hours for compliance. Costs were awarded against Apple on an indemnity basis.


Shop hanger designs held valid and infringed

Mainetti (UK) Ltd v Hangerlogic UK Ltd; Hangerlogic UK Ltd v Mainetti (UK) Ltd* (Mr Recorder Iain Purvis QC; [2012] EWPCC 42; 24.10.12)

The Judge held that Mainetti’s three UK registered designs were valid and infringed by Hangerlogic’s hangers.

Mainetti claimed that Hangerlogic’s three hangers infringed its three UK registered designs for garment hangers. Hangerlogic counterclaimed for revocation of all three registered designs. Hangerlogic subsequently made some changes to the design of its allegedly infringing hangers and sought a declaration that the redesigns did not infringe. Mainetti counterclaimed for infringement. Overlays adduced in evidence of Hangerlogic’s hangers with the Mainetti designs are shown below:

The Judge concluded that none of the three designs were invalid in light of the prior art.

On infringement, the Judge concluded that the scope for design freedom was very wide, and that an informed user would recognise the originality in the specific execution and combination of a number of features found in the designs. The informed user was accepted to be someone in the position of a buyer responsible for purchasing hangers for a retail store or group of stores. Such buyers were very discerning when it came to the appearance of a hanger.

In deciding whether the designs created the same overall impression, the Judge considered that he could take into account the fact that the Hangerlogic hangers were interchangeable with the equivalent Mainetti designs. It was a relevant factor that retailers wished to have uniformity of appearance when the same items were hung next to each other, and that the Hangerlogic and Mainetti hangers could be used alongside one another for the same items of clothing on the same rail.

The Judge held that each of the Hangerlogic hangers created the same overall impression as the respective Mainetti registered designs and therefore infringed Mainetti’s designs.



Copyright in fabric designs

Abraham Moon & Sons Ltd v Andrew Thornber & Ots (Judge Birss; [2012] EWPCC 37; 05.10.12)

Judge Birss held that Abraham Moon’s copyright in its “ticket stamp”, which was used to produce its fabric design, was infringed by the Defendants’ fabric which had been copied from that of Abraham Moon.

Abraham Moon was a woollen mill which manufactured top-end fabrics for customers such as Dolce & Gabbana and Burberry. As well as apparel, it had also started selling fabrics for use in upholstery and furnishing, including its woollen plaid fabric design which it called “Skye Sage”. The first to fourth Defendants were partners in a firm called “Art of the Loom” which had sold to retailers, including the John Lewis Partnership, a woollen upholstery and furnishing fabric called “Spring Meadow”. Spring Meadow was woven by the fifth Defendant, NB Fabrics Ltd. Abraham Moon claimed that Spring Meadow was an infringing copy of Skye Sage. The two fabrics are shown below:

Judge Birss found that the similarities between the fabrics and the overall circumstances raised a strong inference of copying, and inferred that Spring Meadow was produced by copying Skye Sage. The Judge found that Abraham Moon’s “ticket stamp” for producing Skye Sage was an original literary work within Section 3 CDPA. A ticket stamp was the instruction (in a series of words and numbers) to the production team as to how to set up the looms to produce the required design. The key information on the ticket stamp used to produce Spring Meadow was found to derive from the Skye Sage ticket stamp and to reproduce a substantial part of it. As Spring Meadow had been copied from the Skye Sage fabric, it had been made by indirectly copying the literary work.

The Judge also found that the Skye Sage ticket stamp was an artistic work within Section 4 CDPA, specifically a “graphic work” within Sections 4(1)(a) and 4(2). Making the Spring Meadow fabric involved an act of copying the artistic work and was an act of infringement.

Judge Birss rejected the Defendants’ defence under Section 51 CDPA on the basis that the design of Skye Sage was “surface decoration”, as it decorated the surface of the fabric.

The Judge found that Art of the Loom were jointly liable with NB Fabrics for the primary act of infringement in making the Spring Meadow fabric, as well as being liable for acts of secondary infringement. Accordingly, all five defendants were liable for copyright infringement.


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: Abby Minns, Ahalya Nambiar, Kate Bernstein and Rachel Fetches.

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