La Mer Technology Inc v. Laboratoires Goemar SA* (Mummery, Neuberger & Black L.JJ.;  EWCA 978; 29.7.05)
The facts in this case are well known. La Mer Technology applied to revoke, for non-use, the mark LABORATOIRE DE LA MER registered in class 3 for perfumes and cosmetics. Although there was very limited use (five deliveries, of £800 worth of products), the hearing officer held that there had been genuine use of the mark in relation to cosmetics. On appeal, Jacob J. (as he then was)  ETMR 34 referred various questions to the ECJ but noted that if it had not been for the reference, he would have dismissed the appeal. Applying the judgments of the ECJ in this case,  FSR 38, and in Ansul BV v. Ajax Brandbeveiling BV  RPC 40, Blackburne J.  EWHC 2960 (Ch) held that the proven use fell short of genuine use. The appeal to the Court of Appeal succeeded.
It was agreed by the parties that token use and internal use was not sufficient to prove use of the mark. What divided the parties was whether use which was neither internal nor token could nonetheless be excluded from the concept of genuine use, either because it had not come to the attention of end-users or because it was insignificant in the context of the relevant market (see paragraphs 36 – 38 of Ansul and paragraph 22 of the ECJ’s reasoned order in this case).
The Court of Appeal held that the ECJ in Ansul did not impose a requirement that, in addition to not being token or internal, the use had to be substantial or at least significant and/or it had to be communicated to end users. Although in this instance, the use of the mark in the jurisdiction could be said to be close to exiguous, it could not be characterised as de minimis. Further, the goods to which the mark was attached were imported as part of an arm’s length transaction with an independent wholesaler in the jurisdiction. Such a transaction was not internal to the proprietor’s organisation.
Mummery L.J. noted that the judgments of the ECJ should not be read or applied to literally; the ECJ did not decide cases; its judgments were rather part of a continuing conversation between the ECJ and national courts. The legal learning generated by this process flowed, after the fashion of a roman fleuve, from the ECJ to the national courts.
Hewlett-Packard Development Company L.P & Compaq Trade Mark B.V. v. Expansys UK Ltd* (Laddie J.;  EWHC 1495; 14.7.05)
Laddie J. gave summary judgment against the defendant for infringement of the claimants’ UK and CTMs, HP and iPAQ, registered in respect of goods including electronic personal organisers. The defendant, Expansys, had imported personal organisers marked with the claimants’ trade marks from Malaysia and Pakistan for sale in the UK without the claimants’ consent. Expansys put forward three defences, which it claimed had the necessary “real prospect of success”. All three were rejected by the judge.
Firstly, the defendant argued that the claimants had delayed for a period of two years between becoming aware of the defendant’s infringement and commencing proceedings, and such delay was a triable defence. Laddie J. rejected this argument. Any delay had been significantly less than the limitation period of six years and, in the absence of other special features, such as, for example, the claimants’ encouragement which the defendant relied on, the delay could not form the basis of an estoppel defence.
Secondly, the defendant argued that the claimants had consented to importation of the goods into the EEA. Laddie J. rejected the defendant’s claim that consent could be inferred from the language of the instruction leaflets supplied with the products, the shape of the plugs attached to them and the alleged deliberate over-supply of the Malaysian and Pakistani markets. The evidence put before the court did not demonstrate that the claimants had positively given their unequivocal consent, which is the standard required following the ECJ’s judgment in Zino Davidoff v. A&G Imports  RPC 403. The judge found that, conversely, it was apparent that the claimants had objected to the defendant’s importation of the goods and that the defendant had been aware of that fact at all material times.
Finally, the defendant argued that the claimants were abusing their dominant position in the UK market for personal organisers by fixing the price of iPAQ trade marked products in contravention of Article 82 of the EC Treaty. The defendant claimed that the claimants were able to fix prices by using their registered trade mark rights to prevent cheap imports of such products from outside the EEA. However, the judge found that the defendant had not established that price fixing was occurring. In any event, there would be no relevant nexus between the alleged price fixing and the claimants’ cause of action. Even if the defendant had been able to prove the alleged fixing of prices, there was no jurisprudence which held that committing such an offence would result in intellectual property rights being unenforceable. The punishment for abusing a dominant position by fixing prices would be an order to prevent the culprit continuing such practices and, possibly, the payment of damages, but this would not prevent that party continuing to enforce is intellectual property rights to prevent unlicensed imports damaging its European market.
Kabushiki Kaisha Sony Computer Entertainment & anr v. Nuplayer Ltd*(Lawerence Collins J.;  EWCH 1522 (Ch); 14.7.05)
The judge held that Sony was entitled to summary judgment and an injunction preventing the defendant from selling PlayStation Portable (“PSP”) handheld consoles over the Internet. The PSP consoles sold by the defendants were imported from Japan. They were not yet sold in the UK, indeed, they were still undergoing the necessary compliance tests before a CE mark could be applied under the relevant EC safety regulations. Sony was the proprietor of a number of trade marks for e.g. a stylised PS logo and the word PlayStation. Sony applied for summary judgment on the basis that there was no defence following Zino Davidoff v. A&G Imports  RPC 403. The application was successful for the following reasons.
Firstly, the judge rejected the defendant’s submission that the use of the marks was descriptive and therefore did not fall with the Article 5(1) prohibition of “using in the course of trade” (Hölterhoff C-2/00; Arsenal v. Reed C-206/01).
Secondly, he rejected the submission that because the marks were not visible at the point of sale and were not seen by the customer until the contract of sale was concluded, there was no infringement. He was satisfied that, even if the marks were not seen by the consumer before the sale was concluded, Kerly was right in submitting at paragraph 13-27 that “this point is not a requirement, provided that when the sign does become apparent it is understood to be a sign used in the course of trade in relation to the relevant goods”. The ECJ in Arsenal had also interpreted “use” for the purposes of Article 5(1) widely to include matters arising after the sale.
Thirdly, the defendant stated that Sony’s trade marks were obliterated prior to importation. The judge held that even if it was true, about which there was some doubt, the offer to obliterate the marks made no difference to his finding that the marks were used. For example, by informing customers as to why it had obliterated the marks, the defendant would be infringing the marks.
Play It Ltd & anr v. Digital Bridges Ltd* (Sir Andrew Morritt LJ (Vice Chancellor);  EWHC 1001; 12.5.20)
The V.C. granted the claimants interim relief in the form of an injunction until trial preventing the defendant from using its marks (which were similar to the claimants’ marks) on promotional material used to advertise the defendant’s mobile phone games.
The claimants were in the business of producing and selling video games for use on consoles and mobile phones. They sold their products under marks comprising the words PLAY and IT, a red ball with the word IT printed on it and an animated sequence, accompanied by music, involving the word PLAY next to the red ball so that the logo PLAY IT was formed. The claimants had applied to register these marks as CTMs in classes 9, 25, 38, 41 and 42 and, in the meantime, used the marks on packaging, on their website, in the literature accompanying the games and in the games themselves.
The defendant produced and sold video games for use on mobile phones. In April, it designed and launched a new logo, I-PLAY, which it applied to register as various CTMs comprising a red, shiny ball with the words I-PLAY printed on it and an animated sequence involving the ball accompanied by a similar soundtrack to that used in the claimants’ animation. The claimants commenced proceedings for passing-off, objecting to the defendant’s use of the red ball in conjunction with the word PLAY in relation to mobile phone games. The claimants applied to the High Court for an interim injunction to prevent the defendant using its marks in the interim period until trial.
The V.C. held that damages would be an inadequate remedy for the claimants but also found that, if he granted the injunction but the defendant subsequently succeeded at trial, the cross-undertaking in damages given by the claimants would also be an inadequate remedy to compensate the defendant for its losses during the term of the injunction. The judge accepted the defendant’s argument that, once the games had been rebranded, even if the defendant was successful at trial, it would not be possible to revert to the original I-PLAY branding. In any event, the mobile phone networks would refuse to carry re-branded games.
As damages would not be an adequate remedy for either party, the judge considered how best to preserve the status quo as it had been immediately preceding the defendant’s launch of its new marks (applying Garden Cottage Foods Ltd v. Milk Marketing Board  AC 130 at 140). The issue of whether to grant the injunction was likely to be determinative, as there would be little incentive for the claimants going to trial if they did not obtain the injunction and little point in the defendant going to trial after being injuncted because of the difficulty in reverting to its pre-injunction commercial position. The V.C. therefore considered the relative strengths of the parties’ cases, but was unable to conclude that either had better prospects of success than the other.
The determining factor, in the judge’s view therefore, was the length of the period of uncertainty faced by the parties (i.e. the term of the pre-trial interim injunction). As both parties had requested a speedy trial, the V.C. ordered that this should occur and set the date for trial as 11 July, even though the claimants wanted a much later date. Since the trial was less than two months after the date of the hearing, the V.C. did not require the defendant to modify its games so that its logos did not appear on-screen when users commenced playing. The judge ruled that the cost and difficulty which the defendant would have to incur in altering the relevant portion of the programming code was too great when weighed against the transitory nature of the opening sequence of the game and the impact this would have on users during the time leading up to the trial date.
Reporter’s note: I am grateful to my colleagues at Bird & Bird for helping me with the preparation of this month’s report: Shirley McCulloch (the HP and Play It cases) and Cordula Tellmann (theMurúa and SiSi-Werke cases). Note: