IP Case Report for September 2012

01 September 2012

Katharine Stephens, Rachel Fetches, Hilary Atherton

This month we report on the outcome of applications in the High Court to stay trade mark infringement proceedings under Article 104 in EMI v BSkyB and Starbucks (UK) Ltd v BSkyB.

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


Decisions of the GC and the CJEU 


Case  

GC
Constellation Brands Inc v OHIM
(28.06.12)

Application (and where applicable, earlier mark)  

COOK'S


- wines, sparkling wines, wine-based beverages and flavoured wines (33)

Comment

The GC upheld the BoA’s decision that Constellation’s trade mark attorneys Boult Wade Tennant (‘BWT’) had failed to show that it had exercised all due care as required by the circumstances under Art 81(1).


BWT had received instructions from Constellation’s American agent to renew the mark. Through a combination of human error and corruption of BWT’s renewals computer system the instructions were not acknowledged or acted upon. Following notification of the expiry of the mark, BWT filed a request for restitution in integrum under Art 81.


Restitutio in integrum required that (1) the party (or its representative) had exercised all due care in the circumstances and (2) non-observance had a direct consequence of the loss of any right or means of redress. The first condition required that a system of internal control and monitoring of time-limits was in place. The BoA had not interpreted these requirements too strictly.


Human error was not an exceptional event that could not be predicted by experience. BWT had not clarified or explained whether the corruption of the computer system such that the error was not identified was foreseeable or not.


Accordingly, the BoA was correct to find that BWT had not exercised all due care required by the circumstances.

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Case   T-227/11
Wall AGv OHIM; Bluepod Media Worldwide Ltd
(12.07.12)
Application (and where applicable, earlier mark)  


- entertainment services, sporting and cultural activities, providing information on entertainment, recreation and education and rental of films and sound recordings (41)


BlueSpot


- telecommunication services, transmission of messages, pictures and data, by means of computers and via data networks (38)


German and International (Benelux, Bulgaria, Hungary and Romania) marks



- Classes 35 and 38


(Communitymark)

Comment

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


The BoA had been correct to hold that there was some aural similarity between the marks even though the letter ‘s’ could not be disregarded in the pronunciation of the second element of the earlier word mark.


In respect of the earlier word mark the BoA was correct that there was a degree of visual similarity. The word ‘media’ was not particularly noticeable and the shaded ‘o’ did not prevent the mark being perceived as ‘bluepod’ which reproduced 6 of the 8 letters of the earlier mark including the first element ‘blue’. However, the BoA had been correct to hold that the visual dissimilarities between the mark and the earlier figurative mark outweighed any similarity based on the word ‘blue’.


Although the relevant services in class 41 could be provided via telecommunications equipment, the service providers were usually specialist and consumers would not usually expect there to be a link between them and services connected with the transmission of data by computers and data networks on the other. Consumers who bought films or music albums from a provider such as iTunes would not say that they had downloaded or purchased them from a telecommunications provider.


On that basis, the BoA was entitled to find that there was no likelihood of confusion between the marks in respect of the services.

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Case

GC
T-361/11
IHand Held Products Inc v OHIM; Orange Brand Services Ltd
(12.07.12)

Application (and where applicable, earlier mark)

DOLPHIN


- telecommunications systems and installations, interactive terminals for displaying and ordering goods and services and electrical and electronic accessories (9)


DOLPHIN


- barcode and image scanners and related software for use therewith (9)


(Community mark)

Comment

The GC partially annulled the BoA’s decision to reject the opposition under Art 8(1)(b) in its entirety.


‘Electrical and electronic accessories’ should be defined as ‘something added to a machine (or clothing) which has a useful or decorative purpose’. As barcode and image scanners were not stand alone devices but rather accessories to main devices, such as tills or computers, they fell within the definition of ‘electrical and electronic accessories’. Therefore the products must be regarded as similar. Given the identity of the marks, there was a likelihood of confusion in respect of these goods.


However, for the remaining goods, the BoA was correct to conclude that there was no similarity and thus no likelihood of confusion.

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Case

GC
T-389/11
Guccio Gucci SpA v OHIM; Chang Qing Qing
(12.07.12)

Application (and where applicable, earlier mark)

GUDDY


- scientific, nautical, surveying, photographic and optical apparatus and instruments (9)


- precious metals, horological instruments, jewellery and precious stones (14)


GUCCI


- scientific, nautical, surveying, photographic and optical apparatus and instruments (9)


- precious metals, jewellery, precious stones, horological and chronometric instruments (14)


(Community mark)

Comment

The GC partially annulled the BoA’s decision for failure to state reasons under Art 75.


The BoA had held that there was a likelihood of confusion between the marks under Art 8(1)(b), but only in relation to ‘horological instruments’ and ‘jewellery’, due to the highly distinctive character of the earlier mark in the field of luxury goods.


The GC concluded that the BoA’s decision did not make it possible to understand why Gucci’s evidence was not relevant or sufficient for the purpose of proving the highly distinctive character of the earlier mark in relation to the remaining goods. Therefore, the BoA had infringed its obligation to state reasons and the GC annulled its decision in respect of the remaining goods.

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Red Bull stops use of BULLET and “NO BULL IN THIS CAN” across the EU


Red Bull GmbH v Sun Mark Ltd & Anr* (Arnold J; [2012] EWHC 1929 (Ch); 17.07.12 and [2012] EWHC 2046 (Ch); 24.07.12) 


Arnold J held that Red Bull’s two international trade marks (‘ITMs’) for the word BULLIT and its CTM for the words RED BULL were infringed under Article 9(1)(b) and Article 9(1)(c) by the Defendants’ use of the sign BULLET in relation to their energy drink, and by the use of their advertising strapline ‘NO BULL IN THIS CAN’. Sun Mark failed in its counterclaim for a declaration of invalidity of the ITMs based on an argument that the marks were applied for in bad faith.


Red Bull was the manufacturer of the Red Bull energy drink and owned two ITMs for the word BULLIT and a CTM for the words RED BULL. Sun Mark was a distributor and seller of fast-moving consumer products. The second Defendant, Sea Air and Land Forward Ltd, shipped those products, including an energy drink under the sign BULLET, as shown below, and the strapline NO BULL IN THIS CAN:



Red Bull brought proceedings against Sun Mark under Article 5(1)(b) of the Directive for infringement of its ITMs (which designated the UK), and under Article 9(1)(c) of the Regulation for infringement of its CTM, which were registered in respect of, namely, ‘energy drinks’ in Class 32. Sun Mark brought a counterclaim against Red Bull to have the BULLIT ITMs declared invalid under Section 32(3) on the ground that Red Bull had no genuine intention of using the marks in the UK when they were applied for and that as a consequence the marks were applied for in bad faith.


Arnold J held that the BULLET sign with red lettering which was used on the Defendants’ drink can, its website and in the product’s logo was visually, aurally and conceptually very similar to Red Bull’s BULLIT marks in the eyes of the average consumer. Additionally, the goods on which the sign was used were identical with the goods for which Red Bull’s marks were registered. There was therefore a clear likelihood of confusion and infringement under Article 5(1)(b). It was immaterial that there was no evidence of actual confusion.


Red Bull’s CTM had a substantial reputation in the UK and elsewhere in the EU. Arnold J considered that the sign was ‘BULL’ but that this must be considered in the context of the use of the sign in the strapline NO BULL IN THIS CAN, in relation to an energy drink. The Judge considered that the contextual analysis would also look at the words JUST ENERGY ON TARGET or ENERGY ON TARGET which appeared below the words NO BULL IN THIS CAN. In addition, the fact that the strapline was being used in relation to an energy drink which was sold in a get-up similar to that of Red Bull, i.e. similar colours and in the same market, was also relevant. The Judge therefore considered that the use of the slogan would call the Red Bull drink to the mind of the average consumer and therefore create a link between the sign and Red Bull’s CTM. The Judge stated that the average consumer would appreciate that the strapline is a play on words that meant both that there was no Red Bull in the can (because it was a competitor of Red Bull) and that there was no “Bull[shit]” in the can, i.e. nonsense or rubbish, because it was a straightforward, inexpensive product with no gimmicks.


The Judge then considered whether the use took unfair advantage of the distinctive character or repute of the RED BULL CTM. The Judge held that unfair advantage had been taken of the reputation of the Red Bull CTM by the use of the strapline, and therefore there was infringement under Article 9(1)(c). However, use of the strapline was not detrimental to the reputation of the RED BULL CTM because the average consumer would understand that the strapline was a play on words and that the presence of this humorous element would mean that the average consumer would not interpret the strapline as seriously reflecting on the qualities of Red Bull products. 


Arnold J identified the key question as regards the validity of Red Bull’s ITMs as whether Red Bull intended to use BULLIT in the UK at the dates of designation. He held that, even though on the evidence Red Bull had no concrete intention to use the BULLIT mark in relation to goods or services on the date the application for the national mark was filed or on the date when it designated the UK on its international applications, Red Bull did contemplate the possibility of using the mark at some point in the future, which was most likely to be for energy drinks in countries which would potentially include the UK. This was deemed to be sufficient intention to use the mark in the UK in relation to energy drinks for Red Bull legitimately to claim in good faith that it intended to use the marks. The Judge therefore rejected Sun Marks’ claim under Section 32(3).


Hearing on 24 July 2012
In a further hearing in which Arnold J considered the order to be handed down in consequence of his earlier judgment, the Judge granted, among other remedies, an EU-wide injunction against the Defendants. Arnold J also refused Sun Mark’s application for a stay of any relief pending its appeal against the dismissal of its counterclaim or the determination of a later revocation action for non-use against the two ITMs. This was on the basis that the injunction would not cause substantial irreparable harm, and the revocation actions could have been brought at an earlier stage in the proceedings.






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Fine & Country stop use of FINE


Fine & Country Ltd (‘F & C’) & Ots v Okotoks Ltd & Anr* (Hildyard J; [2012] EWHC 2230 (Ch); 31.07.12)


Hildyard J found that Okotoks’ use of the name and sign ‘Fine’ in relation to its estate agency amounted to passing off and infringement of F & C’s registered trade marks. The Judge dismissed Okotoks’ counterclaim for invalidity and revocation of F & C’s marks.


F & C provided services to estate agents, operating under, and licensing to independent local estate agencies, the use of the name ‘Fine and Country’. They made prominent and extensive use of the name and the following logo, which was registered as a CTM and UK trade mark in respect of real estate agency services and real estate affairs, respectively, in Class 36:



The Defendants were in a group which operated a number of national estate agencies, some under the name ‘Fine’, typically used as shown below:



F & C sought to stop Okotoks using the name and sign ‘Fine’. Okotoks counterclaimed to invalidate and revoke the F & C’s marks under Section 3(1)(b) and (c) and Article 7(1)(b) and (c).


Passing off
The Judge rejected the suggestion that F & C’s business was incapable of generating goodwill separately from its licensees. He held that the goodwill had been generated, at least in a substantial part, by F & C as the source of the services and the brand.


The Judge went on to hold that F & C had established the triple requirements of a claim in passing off. The risk of initial confusion or association, leading to instructions being given to Fine on the assumption that it was F & C rebranded was real and, once the assumption had been made, there was a risk that the customer would stay put even after the confusion had been dispelled. Erosion to or dilution of the goodwill in the F & C mark was also a real risk and would be exacerbated by an increasing number of wrong assumptions.


Trade mark infringement
Having made a finding of deception in the context of passing off, the Judge accepted that a finding of a likelihood of confusion for the purposes of Article 9(1)(b) and Section 10(2) was almost inevitable, as well as a finding of infringement under Article 9(1)(c). However, he first considered the validity of F & C’s marks. 


The Judge found that F & C’s trade marks were sufficiently distinctive because they had a recognisable and recognised separate existence apart from the descriptive and laudatory nature of the words themselves. The words, in the manner and context in which they appeared, called to mind the relevant business, not their semantic meaning. The Judge also rejected Okotok’s claim that F & C’s marks were deceptive as to trade origin, finding that F & C retained and exercised a considerable degree of control over licensees, and that Section 28 made special provision for licensees; the average consumer was unlikely to be misled as to origin or confounded as to quality.


Hildyard J went on to find that F & C’s marks were infringed under Article 9(1)(b) and Section 10(2), on the basis that the mark and sign were sufficiently similar to lead to confusion on the part of the average consumer; in particular, the same font, gold underlining, capitalisation and overall impression made it all too easy to mistake the one as the other. The fact that the evidence had shown that Okotoks and its designers appreciated the risk of confusion and decided to live dangerously and take that risk provided further confirmation of a likelihood of confusion.


The Judge also found infringement under Article 9(1)(c) and Section 10(3) because there was unfairness in the intentional adoption by Okotoks of a sign which it appreciated was plainly similar in appearance to the F & C marks. The Judge’s finding in respect of passing off also led him to the conclusion that dilution of F & C’s marks was likely. Finally, although it was not necessary to decide F & C’s case as to tarnishment, the Judge said that he would be inclined to find that element of the case proved, given Okotok’s reputation for aggressive business practices that had led to ASA complaints, as well as other aggressive forms of marketing. 


F & C were held to be entitled to injunctive relief and an inquiry into damages or an account of profits, as well as delivery up and/or destruction of offending material.






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Applications to stay proceedings under Article 104 and for expedition decided differently


EMI (IP) Ltd & Ots v British Sky Broadcasting Group Plc & Anr (Mr John Baldwin QC; [2012] EWHC 1644 (Ch); 25.06.12)


Mr John Baldwin QC (sitting as a Deputy Judge of the Chancery Division) refused EMI’s application for interim injunctive relief in proceedings brought against Sky for trade mark infringement and passing off. The Judge also refused EMI’s application for a speedy trial, and ordered that the registered trade mark proceedings be stayed pending the outcome of Sky’s application to OHIM to invalidate EMI’s relevant mark.  


In response to Sky’s announced intention to launch an online TV service to be known as NOW TV, EMI brought proceedings for trade mark infringement and passing off relying on its CTM for the word mark NOW and the goodwill built up in the name NOW through its promotion and sale of compilation music albums under the style NOW THAT’S WHAT I CALL MUSIC. EMI sought interim injunctive relief to restrain Sky from using the name NOW TV or its intended logo in relation to internet TV services, and applied for the trial to be expedited. Sky opposed EMI’s applications and sought a stay of the proceedings pending the determination of its validity attack against EMI’s CTM at OHIM. 


The Judge held that, in contrast to EMI, which had no firm plans and had made no investment in or commitment to a NOW branded TV channel, there was a certainty of real and substantial damage to Sky if the injunction was granted.  There was no certainty of very substantial damage to EMI for which damages would not be an adequate remedy, and the Judge identified this discrepancy as the most significant factor in his decision not to grant an interim injunction. The Judge attached little importance to the fact that Sky had not sought to ‘clear the way’, finding that it was not realistic for a commercial operation like Sky to give lengthy notice of its otherwise confidential plans to potential competitors, so that its trade mark or passing off rights could be resolved beforehand.  As regards maintaining the status quo, the Judge found that the status quo favoured letting Sky’s plan run its course. 


Having found that there were insufficient reasons for disrupting Sky’s proposed launch at all, the Judge refused EMI’s application for an expedited trial. The Judge took into account that the launch would go ahead before any likely trial date, and that EMI had no sufficiently certain plans to exploit its NOW CTM in relation to TV channels or programmes.


On the question of whether the proceedings should be stayed pending a decision on the validity of EMI’s CTM at OHIM, the Judge found that there were no special grounds under Article 104 not to stay the proceedings. The fact that Sky had applied to invalidate EMI’s mark on receipt of its letter before action did not take the case outside the norm, as such an application could be described as an expected response. The lack of any attempt by Sky to ‘clear the way’ was also not a sufficient reason. The fact that the passing off claim would continue regardless was also found to be of little consequence, especially since EMI had not relied on that particular cause of action in its application for interim relief. Finally, the need for commercial certainty was found to be no greater than in many other cases.






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Starbucks (UK) Ltd & v British Sky Broadcasting Group Plc & Ots* (Arnold J; [2012] EWHC 1842 (Ch); 29.06.12)


In parallel trade mark and passing off proceedings to EMI v Sky, Arnold J refused Sky’s application to stay the proceedings, finding that there were special grounds under Article 104. The Judge also granted expedition as sought by Starbucks.


Starbucks brought proceedings against Sky, claiming that Sky’s planned launch of its new internet television service under the name NOW TV would infringe Starbucks’ CTM (as shown below) and amount to passing off. Sky counterclaimed 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:



As in EMI v Sky, very shortly after receiving a letter before action sent on behalf of Starbucks, Sky initiated invalidity proceedings at OHIM against Starbucks’ CTM. This was done after Sky had requested an extension of time to respond to the letter and agreed not to take a point on delay, without revealing that it was contemplating such an application.


Arnold J considered that there were real issues to be tried on each of the trade mark infringement, invalidity and passing off claims, and that Starbucks had a real, as opposed to fanciful, prospect of success in respect of each. On the question of whether there were ‘special grounds’ not to order a stay, the Judge held that it was open to the Court to take into account the circumstances in which Sky had initiated invalidity proceedings against Starbucks’ CTM before OHIM, and the time which those proceedings could be expected to take until final determination. The Judge held that these grounds amounted to special grounds, at least when viewed in combination with additional factors. Those additional factors were: (i) that it made sense for the Court to try all the disputes between the parties together and it would be wrong to delay the resolution of the passing off claim as a result of a stay of the CTM proceedings; and (ii) the matter required urgent attention and the High Court was the only forum in which the resolution of all the disputes between the parties was possible. 


Arnold J acknowledged that he had reached a different conclusion to that reached by Mr Baldwin QC in EMI v Sky. However, he distinguished the present case on the basis that passing off was not relied upon by EMI, and that Mr Baldwin QC was not taken to the decision of the Paris Commercial Court in Sothys International v Europeenne de Produits de Beauté on the interpretation and application of Article 104.


Arnold J went on to grant expedition, noting that the key principles to be applied were those identified in WL Gore & Associates v GmbH & Geox SPA [2008] EWHC Civ 622. The Judge held, firstly, that Starbucks had shown good reason for expedition on the basis of Sky’s imminent launch and substantial marketing exercise which stood to swamp Starbucks’ goodwill under the names NOW TV and NOW. Secondly, Starbucks would not be in a position to exploit its trade mark rights once the mark had become indelibly associated with Sky. Thirdly, Starbucks had its own commercial plans for expanding its rival service into the UK later in the year. Finally, the Judge accepted that it was in the interests of consumers that confusion be avoided. 


Arnold J did not consider that a grant of expedition would be unduly prejudicial to other litigants, and considered that Sky, with its extensive resources, would be able to be ready for a trial in October 2012.  Expedition was therefore granted.






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PASSING OFF


Woolley & Anr v Ultimate Products Ltd & Anr* (Pill, Arden and Black LJJ; [2012] EWHC 339 (Ch); 26.07.12)


The Court of Appeal (Arden LJ giving judgment) dismissed Ultimate’s and Henley Clothing Ltd’s (“HCL”) appeal against a finding at first instance that, through using the name HENLEYS for their watches, they were liable for passing off their watches as goods of the respondents, Mr Woolley and Timesource Ltd (reported in CIPA Journal, April 2012).


Mr Woolley was the managing director of Timesource, which had become a successful business in the sale of watches. Timesource marketed watches under the brand name HENLEY, and had recently expanded its operations to jewellery and bags. HCL was a clothing company which had in recent years expanded into the accessories market. HCL’s products were marketed under the name HENLEYS. Ultimate sold under licence from HCL watches and jewellery under the HENLEYS name.


The Court of Appeal found that, although there was little direct witness evidence of operative, non-transitory misrepresentation, the Judge was not bound by this to conclude that misrepresentation was not made out. It was for the Judge to make an evaluation of the relative weight of the various strands of evidence and the Court would not interfere unless the Judge’s findings were plainly wrong. The Court held that the situation, in which a judge was faced with limited evidence of misrepresentation and clear evidence of confusion, was exactly the sort of situation in which the Judge was justified in giving more weight to his own experience and to other evidence, especially evidence about the characteristics of the goods themselves, than to witness evidence. 


Although HCL had established concurrent goodwill by virtue of its fashion garment business under the name HENLEYS, the Court held that concurrent goodwill did not constitute a defence to passing off because HCL had not proved that it had goodwill in the name HENLEYS on its own in the field of watches. 


On the question of substantiality of the number of members of the public misled, the Judge was entitled to find that almost all perspective purchasers would regard the HENLEY name and the HENLEYS name as virtually identical. It followed that a substantial number of members of the public would be involved. As purchasers of watches were more likely to know of HENLEY watches than HENLEYS clothing, the Judge had been entitled to find that the misrepresentation was the ‘right way round’. 


The Court found that there was no absolute requirement for damage to be substantial, nor for there to be damage shown under more than one head. The Judge’s rejection of erosion of goodwill did not undermine his inference that the respondents would have suffered some lost sales.






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COPYRIGHT


Reshaun Michael Massey v Dinamo Productions Ltd* (Mr Recorder Douglas Campbell; [2012] EWPCC 27; 13.06.12)


Mr Recorder Campbell struck out Mr Massey’s claim for copyright infringement. The Judge found that there was documentary evidence showing that all of the elements complained of in Dinamo’s children’s television programme were present before Mr Massey created his synopsis, of which he claimed the plot, sub-plots, themes and incidents had been copied. The Judge also found that the similarities relied on by Mr Massey were at a high level of generality and ignored a number of material differences between the works.  The Judge held that the claim was bound to fail and it was therefore appropriate to strike it out.






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Celebrity Pictures Ltd & Anr v B Hannah Ltd* (Floyd J; [2012] EWPCC 32; 19.07.12)


Floyd J held that a professional photographer who had been commissioned to photograph business woman Karen Brady for Oxygen 10’s magazine, was the sole author of the photographs. General instructions provided to him, or the very general acceptance that there was a team effort involved in the photo-shoot, was insufficient to make anyone other than the photographer the author of the photographs.


The Judge also found that B Hannah, a company in the same group as Oxygen 10, was liable for copyright infringement because it had subsequently authorised the publication of the photographs in another magazine after Oxygen 10 had ceased trading.






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DESIGNS


Spare Parts


Bayerische Motoren Werke Aktiengesellschaft (‘BMW’) v Round and Metal Ltd (“R & M”) & Anr* (Arnold J; [2012] EWHC 2099 (Pat); 27.07.12)


Arnold J held that R & M had infringed BMW’s Registered Community Designs (‘RCDs’) for its alloy wheels, as well as several of its CTMs.


R & M imported and sold replica alloy wheels for cars, including BMW and MINI cars. BMW claimed that R & M thereby infringed several of BMW’s RCDs, as shown below:



BMW also claimed that R & M had infringed a number of its CTMs, and that its actions amounted to passing off. 


Design infringement
Arnold J
noted that the principle issue in the proceedings was the interpretation of Article 110 of the Community Designs Regulation (‘CDR’) which states:


“Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.”


The Judge identified four main issues:


1. The Judge found that the wording of Article 110(1) was more consistent with the interpretation that it operated as a defence, and therefore that the onus lay on R & M to establish that it applied in the circumstances.


2. Recital 13 of the CDR referred to a component part of a complex product upon whose appearance the design was dependent, but these words did not appear in Article 110(1). The Judge held that ordinary principles of interpretation of EU legislation dictated that Article 110(1) had to be construed in accordance with Recital 13, i.e. Article 110(1) was to be interpreted as being restricted to component parts which are dependent on the appearance of the complex product.   


3. The Judge held that the words “used...for the purpose of the repair of that complex product” directed attention to what the part was normally used for.


4. The phrase “so as to restore its original appearance” was found to mean the appearance which the complex product had when it was sold by the manufacturer, as it was clear that the purpose of Article 110(1) was to prevent consumers being locked into a captive market for spare parts when they purchased a car, whereas they were not locked in when a previous owner had upgraded the car. 


Arnold J went on to find that R & M’s acts did not fall within Article 110(1), and therefore it did not have a defence to infringement. The designs of alloy wheels were found not to be dependent on the appearance of the car, because wheels of one design could realistically be replaced with wheels of a different design. Although BMW marketed wheel designs which were sympathetic to the design of each model of car, it was clear that customers were not restricted to a particular design of wheel for each particular car.  As regards purpose, the Judge found that the replica wheels were not normally used for the purposes of repairing cars, but for upgrading them. For the same reason, R & M’s replica wheels were not normally used for restoring the car to its original appearance, but instead for improving the appearance of the car. 


Trade mark infringement
BMW’s relevant CTMs were for the word marks BMW and MINI and the following figurative marks, which between them were registered for ‘motor vehicles and parts therefore’ in Class 12 and ‘badges, emblems, signs and nameplates, all being parts, components or accessories for automobiles’ in Class 6, and goods in Class 7:



R & M were held to have infringed BMW’s CTMs under Article 9(1)(a) by supplying stickers bearing the signs together with wheels to which they were to be affixed. There was no guarantee that consumers (and particularly subsequent purchasers of cars to which wheels bearing the stickers had been fitted) would realise that the wheels did not emanate from BMW. Therefore, R & M had not established that there was no possibility of confusion. Certain of R & M’s listings on its eBay store had also infringed BMW’s CTMs under Article 9(1)(b).


Passing off
As the Judge had concluded that R & M’s acts infringed BMW’s CTMs, it was not necessary to reach a conclusion on the passing off claim.






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Dissemination of judgments


Samsung Electronics (UK) Ltd v Apple Inc* (Judge Birss; [2012] EWHC 2049 (Pat); 18.07.12)


Further to finding that Samsung’s Galaxy tablets did not infringe Apple’s RCD for its iPad device, Judge Birss refused to grant an injunction restraining Apple from representing that the Galaxy tablets did, in fact, infringe its RCD. However, the Judge ordered Apple to put advertisements in relevant newspapers and on its UK website announcing the finding of non-infringement.


Judge Birss identified Article 10 ECHR and concerns regarding freedom of speech as a very powerful factor in his decision to refuse to grant the injunction applied for against Apple. The Judge said that it was very important that the courts could be held up to public scrutiny and what happened in them discussed in public. 


While deterring future infringers was not a relevant consideration in this case because the victorious party had been found not to infringe, the policy consideration of publicising and disseminating the outcome of such proceedings was relevant in deciding whether Apple ought to be ordered to publicise the finding of non-infringement. Accordingly, Apple was ordered to place advertisements in several national newspapers and to put a statement on its UK website for a period of six months. However, Judge Birss found that it would not be fair or appropriate to compel Apple to place notices on its other EU websites.


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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: Anna Stanley and Toby Sears.


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