Trade Marks

CFI Decisions

Ref. no. T-289/02Telepharmacy Solutions v. OHIM
Application (and where relevant, earlier mark) TELEPHARMACY SOLUTIONS – dispensing system for pharmaceutical products and goods and services relating thereto (9, 10, 38, 42)
Comment The CFI dismissed the appeal under Art 7(1)(c). It was irrelevant whether “telepharmacy” was a neologism or not. Both separately and in combination, the words were descriptive. The CFI noted that the Board of Appeal had refused the application under Art 7(1)(c) whereas the examiner had refused it under Art 7(1)(b). However, this did not amount to an infringement of the applicant’s rights since, from his reasoning, the examiner’s decision was clearly based on Art 7(1)(c).

Ref. no. T-270/02MLP Finanzdienstleistungen v. OHIM
Application (and where relevant, earlier mark) BESTPARTNER – financial, insurance and internet data processing services (36, 38, 42)
Comment The CFI dismissed the appeal under Arts 7(1)(b) and (c). “Best” and “partner” were generic words denoting the quality of services. Merely coupling them together did not imbue them with any additional characteristic.

Ref. no. T-117/02Grupo El Prado Cervera v. OHIM
Application (and where relevant, earlier mark) 

CHUFAFIT – nuts (29, 31)

CHUFI, word and figurative marks – a range of food stuffs (29, 31)(Spanish registrations)

Comment The CFI dismissed the appeal from OHIM, which in turn held that the opposition under Art 8(1)(b) did not succeed. The goods were identical, but the marks were dissimilar. The different syllabic structure led to pronounced phonetic differences. Further since “chufa” meant tiger nut in Spanish, the initial part of each mark was descriptive. Consequently, there was no likelihood of confusion.

Ref. no. T-115/03Samar v. OHIM
Application (and where relevant, earlier mark) 

Thick ‘tick’ logo, smaller part carrying the words ‘Blue Jeans’, larger part’; class 25, class headings

GAS STATION; class 25 specifically naming a large no. of articles

Comment OHIM allowed the opposition under Art. 8(1)(b) and in R 340/2002-3 the Board of Appeal upheld that decision. The CFI dismissed the further appeal. It refused to admit new documents, reiterating that its role is to supervise the legality of OHIM decisions; and it affirmed the view below that the dominant element of the earlier mark and that of the mark applied for was the same word GAS, the tick and ‘blue jeans’ being dismissed as insignificant or commonplace while STATION merely ‘reinforces the sense of the word GAS without offering an alternative signification’.

Ref. no. T-186/02BMI Bertollo v. OHIM
Application (and where relevant, earlier mark) 

DIESELIT, figurative mark in red – irons, ironing boards (7, 11, 21)

DIESEL – all classes (Italian registration)

DIESEL – all goods in classes (11, 19, 20, 21) (CTM)


 The CFI dismissed the appeal. The opposition was successful under Art 8(1)(b). The goods were identical and the marks were visually, aurally and conceptually similar. The distinctiveness of the opponent’s marks was only considered in relation to the applicant’s goods and, in relation to such goods, was inherently strong.


Ref. no. T-66/03Koffiebranderijen Theehandel ‘Drie Mollen Sinds 1818’ BV v. OHIM
Application (and where relevant, earlier mark) GALáXIA, figurative mark – coffee (30)

GALA – coffee and tea (3) (various national and one international registration)

Comment The CFI upheld the decision of the Board of Appeal to allow registration of the mark. Due to the absence of visual, phonetic and conceptual similarity between the marks in issue, there was no likelihood of confusion on the part of the relevant public under Art 8(1)(b). In particular, in the application, the lettering used was an integral and dominant visual aspect of the mark.

Ref. no. T-185/02Claude Ruiz–Picasso & Ors v. OHIM
Application (and where relevant, earlier mark) 

PICARO – vehicles and parts therefor (12)

PICASSO – vehicles (12) (CTM)

Comment The CFI dismissed the appeal from the decision to allow registration. There was no likelihood of confusion under Art 8(1)(b). The signs were visually similar but the degree of phonetic similarity was low. The word PICASSO was well known whereas the word PICARO had no semantic content for the majority of the non-Spanish speaking section of the Community. In addition, the word sign PICASSO had a clear and specific meaning so that the public was capable of grasping it immediately. The signs were therefore not conceptually similar. The conceptual differences between the marks counteracted the visual and phonetic similarities.

Ref. no. 

M+M Gesellschaft für Unternehmensberatung und Informationssysteme v. OHIM

Application (and where relevant, earlier mark) 

M+M EURODATA – computer software, market research and analysis (9, 16, 35, 41, 42)

EURODATA TV – market research, market analysis (35, 41) (various national and one international registration).

Comment The applicant successfully appealed to the CFI which annulled the Board of Appeal’s decision not to allow registration in classes 35 and 41 under Art 8(1)(b). The relevant public was a business public and was likely, when choosing services, to be especially interested in and attentive to the signs in issue. The M+M component of the mark was at least as likely to attract the relevant public’s attention as the EURODATA component. The M+M and the TV components were very different and their positions resulted in a different overall impression created by each sign. The signs in issue were neither visually nor aurally similar. Furthermore, there was no semantic similarity between M+M and TV.

Ref. no. T-107/02GE Betz v. OHIM
Application (and where relevant, earlier mark) 

BIOMATE – chemical products for use as microbiocides in industrial water and process systems (1)

BIOMET (figurative) – chemical products, chemical compositions for use as biocides (1, 5) (various national and one international mark)

Unregistered sign BIOMET used in Benelux, France, Italy, Austria and Portugal

Comment The Opposition Division had held that, in respect of the opponent’s registered marks, the opposition failed because no translations of the registration certificates had been filed within the time‑limit required. The Board of Appeal partially annulled the decision on the basis that the Opposition Division had created a legitimate expectation on the part of the opponent that the copies of the registration certificates it had sent to OHIM were not tainted by any formal deficiency. The applicant appealed. The CFI annulled the decision and remitted the case to the Opposition Division for further prosecution.

Ref. no. T-115/02AVEX v. OHIM
Application (and where relevant, earlier mark) 

white lower letter “a” in the centre of a black oval background – clothing and footwear (25)

white lower case “a” in the lower right hand corner of a black square – clothing (25)(CTM)


OHIM had refused the application under Art 8(1)(b). The CFI dismissed the appeal. As regards the mark, they were very similar from a visual point of view. Aural and conceptual differences were of little relevance. The goods were identical or, in relation to footwear and clothing, similar.



Colour marks

Heidelberger Bauchemie GmbH (ECJ; C-49/02; 24.6.04)

Heidelberger Bauchemie applied to register the colours blue and yellow at the German Patent Office in relation to various products used in the building trade. The mark comprised a rectangle, the upper part of which was blue and the lower half yellow. The following description of the mark accompanied the application “the trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels”. Internationally recognised colour codes were also used to describe the colours. The German Patent Office rejected the application and, on appeal, the Bundespatentgericht asked the ECJ whether, and if so under what conditions, colours or combinations of colours designated in the abstract and without contours were capable of constituting a trade mark.

The ECJ referred to its own decision in Libertel (C-104/01). It held that, in that case, it should not have considered the minutes of the Council taken at the adoption of the Directive. It was for the Court to determine the answer to this question. Regard should be had, however, to the TRIPS Agreement so far as possible.

There were three requirements which colours and colour combinations had to satisfy. First, they must constitute a sign. The Court noted that colours were normally a simple property of things and, even in trade, they were generally used for their attractive or decorative powers and did not convey any meaning. However, it could be possible for colours, when used in relation to a product or a service, to be a sign.

Secondly, such a sign had to be capable of being represented graphically (see Libertel). The Court held that the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours “in every conceivable form” did not exhibit the qualities of precision and uniformity required by Article 2. Such representations would allow numerous different combinations which would not permit the consumer to perceive and recall a particular combination and enable him to repeat with certainty the experience of a purchase. Furthermore, they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark. However, as in Libertel, the Court held that a sample of the colour concerned, accompanied by a designation using an internationally recognised identification code, could constitute a sufficient graphic representation for the purposes or Article 2.

Thirdly, the sign had to be capable of distinguishing the goods or services from one undertaking from those of other undertakings. The Court noted that colours possessed little inherent capacity for communicating such information. It further noted that, save in exceptional cases, colours did not initially have a distinctive character. Nevertheless, they were capable of requiring such character through use. Thus, it was necessary for the competent authority to decide whether the colour combination satisfied the requirements laid down in Article 3. The examination would have to take account of all the relevant circumstances, including use which had been made of the sign. In addition, the examination should also take account of the public interest in not unduly restricting the availability of the colours for use by other traders.


Erpo Möberlwerk GmbH v. OHIM (Opinion of A.G. Poiares Maduro; C‑64/02; 17.6.04) (Opinion not yet available in English)

The history of this matter is as follows: Erpo Möberlwerk applied for registration of the slogan “Das Prinzip der Bequemlichkeit” (the principle of comfort) for products in Classes 8 (hand tools and implements), 12 (land vehicles and their apparatus) and 20 (furniture). The Examiner refused the registration for all products. Subsequently, the Board of Appeal annulled the decision with regard to the goods belonging in Class 8 (of which comfort is not exactly a general quality), yet confirming it in relation to goods in Classes 12 and 20 on the basis that the mark was descriptive and lacked distinctive character under Articles 7(1)(b) and (c). The CFI annulled the decision. The main point in the appeal to the ECJ related to the issue of whether it were possible to refuse an application for a trade mark only on the basis that the mark (or its component parts) were shown to be already customary in business circles. If that were the case, Article 7(1)(b) would be robbed of its central meaning.

The A.G. repeated the case law on the assessment of the distinctive character of a mark. As to whether slogans required a specific approach, he expressed the view that such appreciation should be made in the context of the case i.e. in a situation such as the present case where the slogan was composed of words referring to characteristics normally connected with the products of that class, it was not clear that the average consumer was able to distinguish the product and identify its commercial origin. This should be the test, regardless of the actual demonstration that such slogan is effectively used in commercial practice, notably advertising.

As indicated by the A.G. it would not be fair to prevent other companies producing similar products from freely referring to the concept of comfort. Additionally, it could encumber the entry into the market of new companies operating in the same class of products. The approach of the CFI was contrary to previous ECJ case law, particularly Windsurfing Chiemsee (Joined Cases C‑108/99 and C‑109/97).

Consequently, the A.G. advised that the ECJ should annul the judgment. Nonetheless, the annulment of the judgment of the CFI does not necessarily entail the validity of the OHIM’s decision refusing the registration of the mark, since the Court did not rule on the third plea in law raised by the applicant alleging the failure to take into account prior national registrations.

Norma Lebensmittelfilialbetrieb GmbH & Co. KG v. OHIM (CFI; T-281/02; 30.6.04)

Norma Lebensmittelfilialbetrieb applied for registration of the sign “Mehr für Ihr Geld” (more for your money) in Classes 3, 29, 30 and 35 for cleaning and cosmetic materials, foods for every day consumption and marketing and promotion, in particular in the retail food sector. The Examiner refused registration under Articles 7(1)(b) and (c). The Board of Appeal annulled that decision in so far as it related to the Class 35 services. The Board of Appeal upheld the Examiner’s decision in relation to Classes 3, 29 and 30 because the mark consisted exclusively of descriptive indications and was devoid of any distinctive character. The applicant appealed, claiming that the Board of Appeal’s decision in relation to Classes 3, 29 and 30 should be annulled.

The CFI held that it was well established that a mark’s distinctiveness had to be assessed firstly, by reference to the goods or services in respect of which registration was sought and secondly, on the basis of the perception of that sign by the relevant public. The Board of Appeal had correctly analysed the mark applied for. The mark would be perceived by the target public (the average German-speaking consumer who was reasonably well-informed and reasonably observant and circumspect) as a mere promotional formula or slogan which indicated that the goods in question offered consumers an advantage in terms of quantity and/or quality as against competing goods. Further, the CFI held that there was nothing about the mark which might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods designated. Even if the mark was used on its own, without any other sign or trade mark, the relevant public could not, in the absence of prior knowledge, perceive it as anything other than a promotional slogan. In addition, the Board of Appeal was correct to find that “with its few pithy words, combined very simply” the mark applied for was capable of being commonly use in trade for the presentation of the goods concerned.

Therefore, the CFI held that the mark would be perceived first and foremost by the relevant public as a promotional slogan, because of its meaning, rather than as a trade mark, and that it was therefore devoid of distinctive character under Article 7(1)(b). It was unnecessary to consider whether the mark also infringed Article 7(1)(c).

Genuine use

MFE Marienfelde GmbH v. OHIM (CFI; T-334/01; 8.7.04)

The application for HIPOVITON in Class 31 for foodstuffs for animals was opposed by the proprietor of an earlier German mark for HIPPOVIT registered for identical goods. The trade mark applicant required that the opponent furnished proof of use. The evidence demonstrated that HIPPOVIT had only been used for the last four months in the relevant period, the turnover being approximately DEM 12,500 representing the sale of 459 units. The Opposition Division rejected the opposition on the grounds that the earlier mark had not been put to genuine use. The Board of Appeal dismissed the appeal. The quantity of sales achieved were too small, corresponding to about 0.75% of the applicant’s total annual turnover.

The CFI annulled the decision. The test to be applied was whether the earlier mark was the subject of acts of use which, having regard to the situation of the business sector concerned, were objectively appropriate to create or preserve an outlet for the products in question. The ratio between the opponent’s and applicant’s turnover, when taken in isolation, was only of minor indicative value and could not be decisive when assessing whether the use of the opponent’s mark was genuine. Furthermore, the Board of Appeal had not taken into consideration various statements made by the opponent and had not allowed the opponent to respond to various statements made by the applicant between the date of the Opposition Division’s decision and the hearing before the Board of Appeal. The Board of Appeal had therefore relied on an incomplete factual basis in coming to its decision.

The Sunrider Corp v. OHIM (CFI; T-203/02; 8.7.04)

The applicant sought to register VITAFRUIT in Classes 5, 29 and 32. The application was successfully opposed by the proprietor of the mark VITAFRUT, registered in Spain, in relation to certain goods in Class 32. That decision was upheld by the Board of Appeal and the appeal to the CFI was dismissed.

During the opposition proceedings, the applicant had put the opponent to proof as to the use of its mark. Before the CFI, the applicant argued that it was apparent from the invoices produced that the earlier trade mark was not used by the proprietor but by a company called Industrias Espadafor SA. The CFI held that where an opponent maintained that the use of the earlier mark by a third party constituted genuine use for the purposes of Articles 43(2) and (3), he claimed by implication that he consented to that use. It was not sufficient that the applicant argued generally in the course of the proceedings that the evidence produced by the opponent was not adequate to establish genuine use. There was a sufficiently firm basis to allow the Board of Appeal to conclude that the earlier mark had been used with the proprietor’s consent.

The applicant also argued that the evidence did not prove genuine use because the turnover was so low. For reasons very similar to those given in the HIPOVITON/ HIPPOVIT case (see above) the CFI rejected this argument. The Board of Appeal had come to the correct decision under Article 8(1)(b).


Anheuser-Busch Incorporated v. Budĕjovický Budvar, národní podnik (Opinion of A.G. Tizzano; C-245/02; 29.6.04) (not available in English)

The following were A.G. Tizzano’s recommendations to the questions referred to the ECJ by the Finish Supreme Court concerning the application and interpretation of the TRIPS Agreement regarding conflicts between trade names and registered trade marks, including use of trade names as trade marks and the definition of existing prior right.

A.G. Tizzano was of the opinion that where a conflict existed between a trade mark and a sign which was alleged to have infringed that mark, the TRIPS Agreement applied and should be taken into consideration when assessing the priority of one right over the other. This was the case even when the conflict had arisen before the TRIPS Agreement entered into force, if the alleged infringement continued after the date in which the Agreement entered into force in the European Community and the Members States.

A.G. Tizzano’s opinion was that when a trade name is used as a mark (linking product with origin) the owner of a registered trade mark could prohibit the use of the trade name on the basis that there was a risk of confusion in the mind of the consumers about the origin of the goods. This principle, however, would only apply when the signs and products were identical.

In the context of Article 16.1 of the TRIPS Agreement, A.G. Tizzano concluded that a trade name could only constitute an existing prior right if it had been used as a trade mark.

These questions had arisen in the context of the long running dispute between the Czech company Budĕjovický Budvar and the American brewery company Anheuser-Busch over the use of the terms Bud, Budweiser and other similar names.

In 1967 the Czech company Budvar registered its trade name “Budĕjovický Budvar” and “Budweiser Budvar” followed by the legal status of the company in Czech, French and English. In 1962 it registered in Finland the trade mark Budvar for beer and in 1972 “Budweiser Budvar” also for beer. These marks were subsequently revoked on the basis of non use. Around 1985, the American brewery, Anheuser-Busch registered in Finland the marks “Budweiser”, “Bud”, “Bud Light” and “Budweiser King of the Beers” in respect of beer. In 1996 Anheuser-Busch issued proceedings against Budvar asking the court for an order to stop Budvar from using the terms “Budĕjovický Budvar”, “Budweiser Budvar”, “Budweiser”, “Budweis” and “Budvar Bud” on the labels of the beer sold in Finland on the basis that these signs were likely to be confused with its own registered trade marks. Budvar claimed that the signs used on the labels were not likely to be confused with Anheuser-Busch’s trade marks and that in any case its registration of the terms Budĕjovický Budvar and Budweiser Budvar as trade names in Finland gave them an earlier right over these signs. The Finish court found that the sign Budĕjovický Budvar was different from Anheuser-Busch’s registrations and that therefore there was no likelihood of confusion. It went further and held that the text of the Budvar’s labels “brewed and bottled by brewery Budweiser Budvar National Enterprise” (the English version of the trade name) in small font was not use of the terms Budweiser Budvar as a trade mark. It simply indicated the trade name of the brewery company. Based on the evidence filed by Budvar that this English version of the trade name was well known in Finland the court allowed them to continue using the English version of its trade name.

On appeal the Finish court found that the evidence filed by Budvar in support of their claim that the English version of its trade name was well known in Finland was not sufficient and that this had affected the findings at the first instance. Both parties then appealed to the Finish Supreme court which stayed the proceedings pending the responses of the ECJ.

Appeals in UK/Commonwealth actions

Cigarrera Bigott, SUCS v. Phillip Morris Products Inc & Registrar General (on appeal from the Court of Appeal of Trinidad and Tobago, Judgment of the Lords of the Judicial Committee of the Privy Council given by Lord Hoffmann; 14.6.04)

The question before their Lordships was whether, in the circumstances of the case, the registration of the word BELMONT for tobacco products in Class 45 was prima facie evidence of the validity of the registration and all subsequent assignments and transmissions. This submission had been accepted by the Court of Appeal. Their Lordships did not accept this submission. Due to the history of the matter, on its face, the Register was far from unambiguous. It contained no entry whatever of the actual registration of the mark but only an entry of an assignment. This was puzzling enough to make it necessary to resort to all admissible evidence to discover what the registration meant. Even if the entries in the Register were to be construed as evidencing valid registration of Phillip Morris Products as proprietor of the mark, the contrary evidence was overwhelming. The appeal was allowed.

Mastercard International Inc v. Hitachi Credit (UK) Plc (Peter Smith J.; [2004] EWHC 1623 (Ch); 8.7.04)

The Judge dismissed the appeal from the decision of the Hearing Officer who, in turn, had dismissed Mastercard’s opposition to a trade mark application for CREDIT MASTER filed for goods/services falling within Classes 9, 16, 35, 36 and 42. The opposition was based on five trade marks for the word MASTERCARD, registered in respect of Classes 9, 16, 18, 25, 28, 35, 36, 38, 41 and 42.

The Judge noted that his powers to interfere with the Hearing Officer’s decision were very limited in respect of factual matters. Further, in the case of discretionary matters, the Appellant Court should not interfere unless the Hearing Officer had exercised his discretion according to the wrong principle.

In this case, the Hearing Officer had refused Mastercard’s application to amend its Grounds of Opposition under Section 5(3) following Adidas Salomon v. Fitness World Trading Ltd (C-408/01) in order to challenge the application on the basis that the goods/services were similar. The Judge held that, although the Court will strive to enable a party to correct its case so that it can have a fair opportunity to present its case fully on the merits, a party did not have an absolute right to amend. The Hearing Officer performed the correct balancing exercise in refusing the application. He had in mind the delay in making the application, the impact the amendment would have on the hearing (Mastercard conceded an adjournment would have been inevitable) and the impact on the other side.

Turning to the substantive grounds, the Hearing Officer applied the correct test both under Sections 5(2) and (3). In relation to the later, he correctly applied the link test (see paragraph 29 of the Adidas Salomon case) and did not confuse it with the test for a likelihood of confusion. He was not convinced that there was any likelihood of a link between the two marks. If he were wrong, he found that the evidence was insufficient to show that the application would take unfair advantage of, or be detrimental to, the distinctive character or repute of MASTERCARD. Again, the Hearing Officer was right to conclude that there must be a real possibility as opposed to a theoretical possibility of such unfair advantage/detriment (this is a theme that started with General Motors v. Yplon C‑375/97 and could be traced through to A.G. Jacobs’ opinion in Adidas Salomon, paragraphs 49 and 50). It was insufficient to suggest that, where there was a possibility of dilution, damage could be inferred without actual proof.

Electrocoin Automatics Ltd v. Coinworld Ltd & Ors (G. Hobbs Q.C. sitting as a Deputy Judge; [no neutral citation]; 28.6.04)

The claimant was the proprietor of UK and Community trade marks for BAR-X and OXO registered, inter alia, for gaming machines and related services in Classes 9, 40 and 41. The defendants failed in their counterclaim that the marks were invalid. Although there had been decades of use of the BAR, X and O on the reels on fruit machines (and therefore were considered origin neutral when used on the reels and win tables), through use, BAR-X and OXO had become indications of origin. The attack under Articles 3(1)(b), (c) and (d) was therefore not made out. Similarly, but considered separately, the attack to invalidate the CTMs failed.

When considering infringement, Mr Hobbs considered the effect of the expression “using in the course of trade” in Article 6(1). He concluded that the rights conferred by registration of a trade mark were not engaged, and therefore not infringed, by use of a sign “other than for the purposes of distinguishing goods or services” (see Article 5(5)). This expression referred to the function which a sign had to be able to perform in order to satisfy the general requirement for registration in Article 2. The legislation aimed to ensure that a trader could not legitimately use a sign to perform the function in a context or manner which would conflict with the use of an identical or similar sign by another trader to perform the same function in relation to goods or services of a kind for which it (the latter sign) was validly registered. The circumstances in which conflict could be found to exist were, for the purposes of infringement, specified in Articles 5(1) and (2).

Having come to this conclusion, he held that the use of the symbols BAR and X on the win tables and use of the same symbols and the symbols O, X and O on the reels was use in the course of trade. However, such symbols were not used for the purposes of distinguishing the defendants’ machines. Indeed, where the formation of OXO by the reels was a randomised event, Mr Hobbs felt that such an event could not be said to realistically possess the attributes of a sign. Consequently, the claim to infringement under Article 5(1)(a) failed and no likelihood of confusion for the purposes of Article 5(1)(b). Further, there was no “cross‑pollination” productive of advantage or detriment for the purpose of Article 5(2). Indeed, Mr Hobbs positively found that there was “due cause” when the use, as here, conformed to the bona fide and established practices of the trade.

Finally, the use of the designation BEAR X did not infringe the BAR-X mark. Article 5(1)(b) was not made out. Although the former might bring to mind the latter, no advantage or detriment of the kind remedied by Article 5(2) was demonstrated.

 Passing off

Red Bull GmbH & Anr v. Mean Fiddler Music Group Plc & Ors (Lewison J.; [no neutral citation]; 28.4.04)

Lewison J. refused an application for an interim injunction preventing the defendants from selling an energy drink called Synergy in their bars. There was a striking similarity between the Red Bull and Synergy cans, the latter used the same colours and had the same dimensions as the former. However, the defendants had taken sufficient steps to distinguish their product from that of the claimants. Firstly, the name Synergy was prominently displayed on the can. Secondly, in accordance with undertakings already given, disclaimers would be given to customers who asked for Red Bull by name. Posters would also be displayed containing disclaimers. On this basis, Lewison J. held that the deception was dispelled. Had it not been for the undertakings and the disclaimers, he might have reached a different conclusion.

Parallel imports

Boehringer Ingelheim KG & Ors v. Swingward Ltd, Boehringer Ingelheim KG & Ors v. Dowelhurst Ltd, Glaxo Group Ltd v. Swingward Ltd (Kennedy, Clarke & Jacob L.JJ.; [2004] EWCA (Civ) 757; 17.6.04)

The Court of Appeal has now agreed the form of questions to be sent to the ECJ. In relation to re-boxed products, the primary question relates to whether the importer or the trade mark proprietor bears the burden of proving that the new packaging complies with the conditions set out in Joined Cases C-427/93, C-429/93 and C-436/93, Bristol‑Myers Squibb v. Paranova. In relation to over stickered products, the primary question relates to whether the five conditions set out in those joined cases applied at all and if the answer was yes which party bears the burden. Questions on notice have also been referred.

Reporter’s note: I am most grateful to my colleagues at Bird & Bird for helping me with this month’s report: Cristina Garrigues (Anheuser-Busch), Marta d’Oliveire Gaspar (Das Prinzip der Bequemlichkeit) and Clare Wilson for a number of the CFI decisions.

The ECJ/CFI decisions reported this month can be found at