This month we report on a number of decisions of the GC which touch on what makes a trade mark "distinctive".  In Pavel Maslyukov v Diageo the issue of when an appeal is allowed was visited and it was emphasised by the judge that the right to appeal lies against a judgment or oder and does not extend to a finding or statement of reasons given by the court for making that judgment or order. Also, we discuss the Google France v Louis Vuitton matter, where the court considered whether Google's AdWords system amounted to trade mark infringement - a case which was closely followed by Die BergSpechte Outdoor Reisen. We also consider remedies for breach of confidence, as discussed in Vercoe & Ots.

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Decisions of the GC


Lufthansa AirPlus Servicekarten GmbH v OHIM; Applus Servicios Tecnológicos, SL

Application (and where applicable, earlier mark)  

- various goods and services (9, 35, 36, 37, 40, 41, and 42)
AirPlus International
- various goods and services (9, 35, 36 and 42)


The GC dismissed the appeal from the BoA’s decision to reject the opposition under, inter alia, Arts 8(1)(b) and 8(5).

The GC concluded that visually, the differences between the marks outweighed the similarities.  Only the letter ‘A’ (which was stylised and yellow in the mark applied for) was shared.

The marks were also not similar phonetically.  The BoA was correct in concluding that none of the three elements of the earlier mark were dominant or more distinctive than the others.  The BoA was also correct not to disregard the ‘International’ element of the earlier mark.

Conceptually, the BoA was correct to conclude that there was a low degree of similarity. Both signs contained the concept ‘plus’ although represented differently, but this concept occurred in many trade marks.  The GC concluded that the concept ‘plus’ could not be monopolised and no opposition would be likely to succeed simply because the marks at issue both referred to the word ‘plus’ or to the sign ‘+’.  The GC concluded that there was no likelihood of confusion under Art 8(1)(b).

The plea based on Art 8(5) failed because the signs were neither identical nor similar.



Mundipharma AG v OHIM; ALK-Abelló A/S

Application (and where applicable, earlier mark)  

- pharmaceutical preparations for human medical use (5)
- pharmaceutical preparations including pharmaceutical preparations for immunotherapeutic purposes, diagnostic preparations for medical purposes (5)


The GC dismissed Mundipharma’s appeal from the BoA’s decision to uphold the opposition and reject the application under Art 8(1)(b).

The GC upheld the BoA’s finding that there was a certain visual similarity between the two marks.  The first five letters of the two marks were identical and the consumer would generally pay greater attention to the beginning of a word mark than the end.
Phonetically, the marks were similar to a medium degree and conceptually no comparison was possible. 

The GC held that it was conceivable that the relevant public would think that the trade mark applied for was derived from the earlier mark and designated a specific range of pharmaceutical goods included in the wider range of goods covered by the earlier mark, since pharmaceutical companies often produce a number of medicines extending beyond the treatment of a single health disorder.

Given the identity of the goods, the average distinctiveness of the earlier mark and the similarity between the signs as a whole, there was a likelihood of confusion under Art 8(1)(b). 



Weldebräu GmbH & Co. KG v OHIM; Kofola Holding a.s.

Application (and where applicable, earlier mark)  

Description: a bottle of cylindrical form which has a narrowed helically formed neck and its cylindrical part is labelled ‘snipp’
- various goods (30, 32 and 33)

- various goods (21, 32 and 33)


The GC dismissed the appeal from the BoA’s decision to reject the opposition under Art 8(1)(b).

No phonetic or conceptual comparison between the marks could be made since the earlier mark did not contain any word element, and word element ‘snipp’ of the mark applied for was not liable to affect the overall impression. 

The BoA rightly concluded that there were significant visual differences between the signs.  The earlier mark was larger, slimmer and more delicate than the mark applied for. The GC concurred with the BoA’s finding that there was no likelihood of confusion.

That conclusion was not affected by Weldebräu’s submission that the tactile impression of the bottle was important.  The selling arrangements for the bottles (i.e. from a visual display in a shop or by ordering a bottle from a bar or restaurant) meant that the consumer would mostly concentrate on the word and figurative elements on the bottle labels before making a purchase.



hofherr communikation GmbH v OHIM

Application (and where applicable, earlier mark)  

- services relating to cultural and sporting events and recreation (41)
- hotels, boarding lodging, rental of tents, tourist homes (43)


The GC dismissed hofherr’s appeal, finding that the sign was descriptive under Art 7(1)(c).

The GC confirmed the meaning of the expression ‘nature watch’ as being the act of watching, keeping awake and being vigilant for the purpose, inter alia, of observing nature.
A sign designating the nature or intended purpose of a service is not limited to indications of how and where the service in question is provided or at which consumers it is directed.  An indication which relates to the various elements or aspects which the provision of that service entails for the target customer will also describe the nature of a service.  Hofherr’s submission that the activity of observing nature was an action of the consumer and not the object of the services themselves was therefore rejected. If the service enabled nature to be observed, or was suitable for that purpose, the consumer would perceive such indications as descriptive, provided that the characteristics were relevant to the service concerned.

The GC considered each of the various categories of services and found in each instance a sufficiently direct relationship between the NATURE WATCH mark and the services referred to. The BoA did not err in refusing the registration under Art 7(1)(c).



Mäurer + Wirtz GmbH & Co. KG v OHIM; Exportaciones Aceiteras Fedeoliva, AIE

Application (and where applicable, earlier mark)  


- paper and cardboard goods (16)
- edible oils (29)
- advertising, business management, business administration (35)
- transportation, packaging and storage of goods (39)

- toiletries etc (3)
(CTM and various German national marks)


The GC annulled the BoA’s decision to dismiss the opposition in so far as it was rejected under Art 8(5). The other aspects, including the opposition under Art 8(1)(b) were dismissed.

The BoA had misinterpreted Art 74(1) and was wrong to declare Mäurer’s plea under Art 8(5) as inadmissible.  The plea was not an inadmissible ‘new fact’.  Although no evidence had been submitted before the Opposition Division to show that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, the notice of opposition had indicated that the opposition was based on Art 8(5) and evidence had been submitted regarding the reputation of the earlier marks.

Mäurer’s submission as to how the conditions under Art 8(5) had been met merely clarified the nature of the alleged likelihood of harm and should have been taken into account by the BoA.



2nine Ltd v OHIM; Pacific Sunwear of California Inc.

Application (and where applicable, earlier mark)  

- perfumes (3)
- sunglasses (9)
- electric light bulbs (11)
- jewellery (14)
- purses, bags, umbrellas, wallets (18)
- pillows (20)
- clothing (25)
- belts, buckles, barettes, hair pins, hair clips, hair scrunchies (26)

- soaps, perfumes (3)
- leather goods (18)
- textiles (24)
- clothing (25)
(International and UK marks)


The GC dismissed the appeal from two BoA decisions under Art 8(1)(b) in relation to two slightly different figurative marks for the word NOLLIE. The GC gave two identical judgments, and held that the BoA was correct in its decision that there was no likelihood of confusion in respect of goods in Classes 9 and 14 as well as “barettes, hair pins, hair clips, hair scrunchies” in Class 26 of the application, as these were dissimilar to the goods covered by the earlier marks.

The GC upheld the BoA’s finding that the nature, intended purpose and method of use of the goods at issue were different. Further, the goods were not complementary to each other.   The relationship between the goods in Classes 9 and 14 and clothing was too indirect to be conclusive. In relation to hair accessories, it was held that although the selection of a specific item for hair may be influenced by the wish to harmonise with particular clothing, a search for a certain aesthetic harmony in clothing was a common feature in the entire clothing sector and it was too general a factor to justify, by itself, a finding that all goods concerned were complementary and thus similar.

There was therefore no likelihood of confusion in respect of these goods.



Eliza Corporation v OHIM; Went Computing Consultancy Group BV

Application (and where applicable, earlier mark)  

-computer programs for use in speech recognition applications (9)
- speech recognition hardware maintenance (37)
- applied service provider for speech recognition applications (42)

- software (9)
- documentation and manuals (16)
- establishing and managing databases (35)
- computer services (42)


The GC dismissed the appeal by Eliza, finding that there was a likelihood of confusion under Art 8(1)(b).

The GC agreed with the BoA that the words were visually similar.  Neither the font nor the figurative elements of the sign applied for affected this finding.

The BoA had failed to recognise that the letter “i” could be pronounced as “eye” or “ee” in certain languages and that “s” and “z” were not always pronounced identically.  The GC therefore concluded that the marks were phonetically “merely similar” rather than “highly similar” as the BoA had found.

Conceptually, the marks were identical in parts of the European Union (where they would be recognised as female names derived from the same root) and at least highly similar throughout the European Union.

As the goods and services were identical or similar and the signs were globally similar to a high degree, the GC found a likelihood of confusion and dismissed the appeal.


GC Decisions not yet in English


Monoscoop BV v OHIM

Application (and where applicable, earlier mark)  

- games, computer games and lottery and online gaming services (9, 28, 41)


 The GC upheld the BoA’s decision to reject the application.
The mark was descriptive of the goods and services applied for under Art 7(1)(c) and was devoid of any distinctive character under Art 7(1)(b).



T 15/09
Européenne de traitement de l’information (Euro-Information)  v OHIM

Application (and where applicable, earlier mark)  

-  automated cash machines, financial affairs and telecommunications (9, 35, 36, 37, 38, 42)


 The GC overturned the BoA’s decision to reject the application.

The BoA had decided that the mark was descriptive under Art 7(1)(c) and devoid of distinctive character under Art 7(1)(b).  The GC held that the BoA had erred by not examining the mark in relation to each of the relevant categories of products and services.




Application (and where applicable, earlier mark)  

- cleaning and polishing  preparations (3)
- non-metallic rigid pipes for building (19)
- cleaning of exterior surfaces of buildings (37)


The GC upheld the BoA’s decision to reject the application.
The mark was descriptive under Art 7(1)(c).



T 427/07
Mirto Corporación Empresarial, S.L. v OHIM; Maglificio Barbara Srl

Application (and where applicable, earlier mark)  

-  cosmetics, cleaning solutions, bags and clothing (3, 18, 25)

- perfumers, leather goods,  clothing and footwear (3,18, 25)


 The GC dismissed Mirto’s appeal and upheld the BoA’s decision to reject the opposition.

The GC held that there was no likelihood of confusion under Art 8(1)(b).



T 423/08
Inter-Nett 2000 Kereskedelmi és Szolgáltató kft v OHIM; Unión de Agricultores, SA

Application (and where applicable, earlier mark)  

-- preserved fruits and vegetables, jams and compotes, meats, oils, eggs and milk products (29) 

-- fruits and vegetables (31)


 The GC upheld the BoA’s decision to partially allow the opposition against the registration of the mark for some of the goods in Class 29 (preserved fruits and vegetables, jams and compotes).  Unión de Agricultores did not appeal the decision in relation to the other goods.

There was a likelihood of confusion with the earlier mark in this class under Art 8(1)(b).

The opposition was rejected in relation to the other goods and services.


 Composite marks

Société des produits Nestlé SA v OHIM; Master Beverage Industries Pte Ltd (GC; joined cases T-5/08 to T-7/08; 25.03.10)

Master Beverage Industries applied to register three marks (reproduced below) for coffee in Class 30.

Nestlé opposed the applications under Articles 8(1)(b) and 8(5) relying on earlier national and International registrations (reproduced below) in Class 30 for coffee.

 The Opposition Division rejected the opposition following which an appeal was dismissed by the BoA on the basis that the marks at issue were not similar. The GC annulled the BoA’s decision, concluding that the BoA had erred in finding the marks dissimilar and then not considering the likelihood of confusion.

Contrary to the BoA’s conclusions, the element consisting of the red mug and coffee beans in the marks applied for was not entirely negligible (although the GC acknowledged that the element had a low degree of distinctiveness).  Therefore the comparison of the signs could not be limited to just some of their elements, but must be based on the overall impression created by those signs.

When performing a visual comparison of the marks, the GC took the approach of first analysing the similarity between the representation of the mug and beans in the marks applied for with the earlier marks and then carrying out a global assessment.  The GC concluded that the mug and coffee beans element of the marks applied for were visually similar to the earlier marks.  As regards the visual comparison of the overall impression created by the marks at issue, the GC concluded that the marks applied for were weakly similar to the earlier marks.  On the issue of the distinctive character of the earlier marks, the GC commented that, while it was necessary to examine the distinctiveness of an element of a composite mark at the stage of assessing the similarity of the signs in order to determine any dominant element, the degree of distinctiveness of the earlier mark was to be taken into account in the context of the global assessment of the likelihood of confusion.  It was therefore not appropriate to take account of what may be a low degree of distinctiveness of the earlier mark at the stage of assessing the similarity of the signs.

The GC noted the conceptual similarity of the red mug and coffee element of the marks applied for with the earlier marks, but acknowledged that this element had a low degree of distinctiveness because it was suggestive of the goods in question.

Since there was some visual and conceptual similarity between the relevant marks, albeit slight, the BoA should have carried out an assessment of the likelihood of confusion.  The BoA’s decision was therefore annulled.


 Appeal from an opposition under Section 3(6)

Pavel Maslyukov v Diageo Distilling Ltd & Anr (“Diageo”)* (Arnold J; [2010] EWHC 443 (Ch); 17.03.10)

Maslyukov applied to register the word marks CONVALMORE, DALLAS DHU and PITTYVAICH for alcoholic beverages including Scotch whiskey.  The Hearing Officer allowed Diageo’s opposition under Section 3(6) and the High Court dismissed Maslyukov’s appeal.  The High Court also dismissed Diageo’s cross-appeal from the Hearing Officer’s rejection of its opposition under Sections 3(1)(c), 3(3)(b) and 5(4)(a) on the basis that it did not have jurisdiction to hear the appeal.  But, the Judge commented obiter that the Hearing Officer had been wrong to reject Diageo’s opposition under Section 5(4)(a).

The Marks

CONVALMORE, DALLAS DHU and PITTYVAICH are the names of Scottish whisky distilleries, which are, or have been, owned by Diageo or Diageo’s predecessors in business. Although the distilleries are now inoperative, independent third parties (including Maslyukov) have amassed stores of the whisky distilled by the distilleries with the intention of maturing, bottling and marketing the product under their own label. Whiskey produced by the inoperative distilleries is therefore still being sold.

Bad faith

As Maslyukov had no relationship with the distilleries, the Hearing Officer could see no reason for Maslyukov’s applications other than to use them as a springboard for his proposed business in the hope that that his products would be identified with the distilleries and thus benefit from their reputation.  The Hearing Officer concluded that reasonable and experienced men in the Scotch whisky trade would therefore consider Maslyukov’s filing of the applications to fall short of acceptable standards of commercial behaviour.  The Judge agreed, dismissing as groundless Maslyukov’s claims that the Hearing Officer had applied a presumption of bad faith to him because he was a foreigner involving himself in Scottish traditions and that the Hearing Officer had wrongly deprived him of a period of five years in which to start bona fide use of the marks.  The Judge also held that bad faith must be objectively assessed in light of the applicant’s knowledge.  It is immaterial whether the applicant subjectively sees nothing wrong in what he is doing.

Diageo’s cross-appeal

The Judge refused to entertain Diageo’s appeal against the Hearing Officer’s decision on the basis that it would be contrary to the principle in Lake v Lake [1955] P 336, that is, the right to appeal lies against a judgment or order and does not extend to a finding or statement of reasons given by the court for making that judgment or order.  A successful party could not appeal a decision simply because it disliked a particular finding adverse to it.  Diageo could therefore appeal the Hearing Officer’s decision as to whether to uphold or reject the opposition, but was not entitled to appeal his conclusions as regards individual grounds of opposition. 


Keyword services and trade mark infringement

Google France SARL & Anr v Louis Vuitton Malletier SA & Ots (CJ (Grand Chamber) C-236/08 to C-238/08; 23.03.10)

The CJ delivered its judgment as to whether Google’s AdWords system amounted to trade mark infringement.  The three joined references were from the Cour de cassation (France).

In summary the CJ found that:

  • the use of keywords by advertisers may constitute trade mark infringement where the advertisement did not make it clear to the average internet user whether the goods or services on offer originated from the trade mark owner or from an unrelated party;

  • the provider of an internet referencing service such as Google’s AdWords system is not liable for trade mark infringement because it did not “use” the trade marks within the meaning required to constitute infringement; and

  • the hosting defence under Article 14 of the E-Commerce Directive could apply to Google in respect of its AdWords system so long as it had not played an active role giving it knowledge of, or control over the data stored at the request of the advertiser.

Alongside its search engine service, Google operated its AdWords system which allowed advertisers to bid on keywords, with the effect that their advertisements (referred to on the site as “Sponsored Links”) were displayed to internet users searching for those keywords.

The CJ considered the liability of:

  • the referencing service provider (i.e. Google), in relation to its liability for storage of a keyword and its organisation of the display of its client’s advertisements on the basis of that keyword; and

  • the advertisers, in relation to their liability for the selection of the signs as keywords and the display, by means of the referencing mechanism, of the advertisements (i.e. sponsored links) which result from that selection.

The CJ examined the questions referred primarily from the angle of infringement of (a) identical marks in relation to identical or similar goods or services; and (b) marks with a reputation.

Identical marks / identical or similar goods or services (Articles 5(1) and (2))

For there to be infringement it was necessary for the following conditions to be met:

(i) use in the course of trade;
(ii) use ‘in relation to goods and services’; and
(iii) use liable to have an adverse effect on the functions of the trade mark.

The CJ considered each condition in turn.

(i) Use in the course of trade

In contrast to the opinion of the AG, the CJ found that Google, in allowing its clients to use signs which were identical with, or similar to, trade marks, did not itself use those signs in its own commercial communications.

The CJ noted that just because the referencing service provider created the technical conditions necessary for the use of a sign and was paid for that service did not mean that it actually used the sign.

Again in contrast with the opinion of the AG, the CJ held that an advertiser using the referencing service and choosing as a keyword a sign identical with another’s trade mark was using that sign in the context of commercial activity with a view to economic advantage. The use of the sign selected as the keyword triggered an advertisement displaying a link to the site where the advertiser offered his goods or services for sale.

  • Given the above findings, the CJ only needed to consider the other conditions as they related to use by the advertiser.

(ii) Use ‘in relation to goods and services’

The CJ held that use by an advertiser of a sign identical with a trade mark as a keyword in the context of an internet referencing service fell within the concept of use ‘in relation to goods or services’. Specifically, the CJ found that:

  • where the advertiser selects as a keyword the trade mark of its competitor with the aim of offering internet users an alternative to the goods or services of the trade mark owner, there was a use of that sign in relation to the goods or services of that competitor; and

  • even in cases in which the advertiser did not seek to present its goods or services to internet users as an alternative to the goods or services of the owner of the trade mark, but sought to mislead internet users as to the origin of its goods or services by making them believe that they originate from the owner of the trade mark or from an undertaking economically connected to it, there was use ‘in relation to goods or services’.

(iii) Use liable to have an adverse effect on the functions of the trade mark

For the purposes of considering whether the advertiser’s use of the sign had an adverse effect on the functions of the trade mark, the CJ considered that the relevant functions to be examined were the functions of indicating origin and advertising.

The origin function
The CJ noted that the effect on this function depended on the manner in which the advertisement was presented. It found that the function of the mark would be adversely affected where the advertisement did not enable an average internet user, or enabled that user only with difficulty, to ascertain whether the goods or services referred to originated from the owner of the trade mark or an undertaking economically connected to it or, on the contrary, originated from a third party.

The CJ indicated that the following facts would give rise to a conclusion that there was an adverse effect:

  • where the advertiser’s ad suggested there was an economic link between it and the owner of the trade mark; or

  • where the ad was so vague as to the origin of the goods or services that normally informed and reasonably attentive internet users were unable to determine whether the advertiser was economically linked to the trade mark owner.

The advertising function
The CJ found that a trade mark owner was entitled to prohibit a third party from using an identical sign where that use adversely affected the proprietor’s use of its mark in sales promotion or as an instrument of commercial strategy.

The CJ concluded that because the proprietor’s use of the mark in the natural search results was not affected, the use of the sign by the advertisers was not liable to have an adverse effect on the advertising function of the trade mark.

Marks with a reputation (Article 5(2))

The CJ found that as Google did not use the mark it was not liable to infringement under the broader trade mark infringement right granted by Article 5(2) to marks with a reputation.

Liability of the referencing service provider

The CJ found that the liability exemption for hosts under Article 14 of the E-Commerce Directive applied to an internet referencing service provider in the case where it had not played an active role which gave it knowledge of, or control over, the data stored. If it had not played such a role, the service provider could not be held liable for the data which it had stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

In contrast to the position of the AG, the CJ considered that the hosting defence may apply to Google, but referred the question back to the national court. It noted that a relevant factor was the role played by Google in the drafting of the commercial message which accompanied the advertising link, or in the establishment or selection of keywords.


Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni & Reisen GmbH (CJ (First Chamber); C-278/08; 25.03.10)

Two days after the Google v Louis Vuitton case was handed down, the CJ handed down a second judgment on search engine keywords. 

Die BergSpechte owned the following CTM for clothing (Class 25), travel arrangements (Class 39) and teaching, training, entertainment and sporting activities (Class 41): Reisen organised outdoor trekking and adventure tours. A Reisen advertisement appeared as a sponsored link when internet users entered the term ‘Edi Koblimüller’ and/or ‘BergSpechte’ into the Google search engine.

At first instance the Austrian Court granted an interim injunction.  On appeal the Oberster Gerichtshof stayed the proceedings and made a reference to the CJ on the interpretation of Article 5(1).

The Austrian Court asked whether Article 5(1) should be interpreted as meaning that a trade mark owner would be entitled to prevent a third party from displaying an ad for goods/services identical with, or similar to, those for which the mark is registered on the basis of a keyword identical with, or similar to, the trade mark which the third party had selected or stored in connection with an internet referencing service.

The CJ’s ruling on Article 5(1) was almost identical to that given in the Google case in relation to identical marks, thus clarifying that the protection covers keywords which are similar to the trade mark.

Relying heavily on the earlier Google decision, the CJ confirmed that the sign selected by the advertiser as a keyword was the means used to trigger the display of the ad and was therefore ‘use in the course of trade’ within the meaning of Article 5(1).  That would be the case even if the sign selected as the keyword did not appear in the advertisement. 

It was for the national courts to decide whether the sign ‘Edi Koblimüller’ was similar to the CTM and whether the ‘BergSpechte’ sign was identical to the CTM.  However, the CJ noted that should the national court decide that the sign ‘BergSpechte’ was not identical to the CTM, it would be appropriate to hold that it was similar.

The conclusion in Google that the Google Adwords service was not liable to have an adverse effect on the function of advertising was equally applicable here.  As to the function of indicating origin, the CJ held that it was for the national court to decide whether there had been an adverse effect in light of the factors set out in the Google decision.

The CJ held that it was for the national court to decide whether there was a likelihood of confusion when internet users were shown on the basis of a keyword similar to the mark, a third party’s ad which did not enable normally informed and reasonably attentive internet users, or enable them only with difficulty, to ascertain whether the goods/services originated from the trade mark owner or a third party.

Lastly, the CJ concluded that it was not necessary to answer the referring court’s second question regarding the scope of protection provided by a trade mark and whether it differed according to whether the ad appeared as a ‘sponsored link’ or elsewhere.


Selected decisions of the Appointed Person (Q3, 2009)


The Coca-Cola Company v Pepsi Co, Inc

Application (and where applicable, earlier mark)  

-- mineral and aerated waters; non-alcoholic drinks excluding beer; fruit drinks and fruit juices etc (32)


 Amanda Michaels upheld the HO’s decision under s.3(1)(b) and the opposition succeeded on that basis.

However, Ms Michaels allowed the appeal under s.3(1)(c). The HO had erred in his application of s.3(1)(c). The correct test was whether, despite the elements added to the word mark to make it a device mark, the mark still consisted exclusively of elements which designated characteristics of the goods. Ms Michaels held that the mark was a device mark and did not consist exclusively of the word zero. It should not be refused registration by reason of s.3(1)(c).

Under s.3(1)(b), the HO had correctly carried out a whole mark analysis in assessing distinctive character. It was not an error for the HO to consider the existence of marks on the Register which included the word zero in relation to the relevant goods at the date of the application for registration.  Ms Michaels held that the mark lacked distinctiveness irrespective of the fact that the vortex device of the ‘O’ of ‘zero’ was a registered trade mark and was therefore independently distinctive.



Omega Engineering Inc v Omega SA

Application (and where applicable, earlier mark)  

- apparatus for checking and measuring distance for science and/or industry (9)

- instrument testing, instrument maintenance,  being for science and/or industry (37)

- engineering design services for others in the field of measurement and control for science and/or industry (40)


- measuring and signalling apparatus for use in sport; (9)
- maintenance and repair of measuring apparatus (37)

- research and development in the field of measuring and checking time and distance (42)


The HO found that Omega SA’s opposition under s.5(2)(b) succeeded in relation to the Class 37 and 40 goods and services and in relation to some, but not all, of the Class 9 goods. Professor Ruth Annand dismissed the appeal by Omega Engineering and upheld the appeal by Omega SA whose opposition therefore succeeded.

The grounds of appeal by Omega Engineering, the applicant, were unclear.  However, Ms Annand dismissed the appeal, upholding the HO’s decision that Omega SA had proved use of its earlier marks and that use had been on goods and services similar to those for which registration was sought.

Ms Annand held that the HO erred in assessing the opposition under s.5(2)(b).  The marks were similar with OMEGA being the distinctive part of the mark applied for.  There was some degree of overlap between the specifications as sport can be considered both a science and an industry.  A likelihood of confusion was made out due to the high degree of similarity between the marks and the enhanced distinctive character of the earlier mark.

Ms Annand held that Omega SA was not estopped from opposing the application by virtue of a co-existence agreement.  Clause 4(c) of the agreement restricted Omega SA from opposing in relation to apparatus ‘industrially and / or scientifically employed for measuring’ a range of parameters.  The parameters set out did not include distance and as such Ms Annand held that the specification of the application fell outside clause 4(c).



Jeremy Kerner v Stewart Waters

Application (and where applicable, earlier mark)  

- gambling services; gaming services etc. (41)


Iain Purvis QC allowed the appeal from the HO’s decision and directed that the mark should be revoked for non-use under s.41(1).

There was no finding by the HO in relation to whether use of I KNOW THE SCORE by Mr Kerner with the consent of Mr Waters (the proprietor) was use of a mark with a different distinctive character from the registered mark. Mr Kerner submitted therefore that Mr Waters could not rely on the argument on appeal because no Respondent’s Notice had been filed. However, Mr Purvis held that as the Rules contained no provision requiring a Respondent’s Notice to be filed on appeals to the Appointed Person, he would consider the issue.

Mr Purvis held that use of I KNOW THE SCORE did not amount to use of the mark under s.46(1)(a) because the use altered the distinctive character of INoTheScore. The use of four words run together into one word and the misspelling of the work “know” were the primary source of the mark’s distinctive character.

Further, Mr Waters was wholly unable to show that, absent the negotiations with Mr Kerner to grant a license, he would have used the mark. Even if it had been otherwise, Mr Purvis held that the negotiations did not amount to a proper reason for non-use for either of the two periods in issue under s.46(1)(a) or (b) as they were not a reason that was independent of the will of the proprietor.



Green Baby Ltd v Imran Hussain & Ots

Application (and where applicable, earlier mark)  

- baby wipes for cleaning purposes, impregnated with cosmetic moisturising lotions (3)

- babies nappies, paper products and wipes of paper (16)


Geoffrey Hobbs QC upheld the decision of the HO. Green Baby, the applicant for revocation, filed evidence late and it was admitted.  Mr Hobbs held that the power to allow evidence to be filed under Rule 33A(6) should not be conflated with the power to allow extensions of time for filing evidence under Rule 68.

Imran Hussain, the proprietor of TUSHIES appealed the HO’s decision to admit additional evidence to be filed by Green Baby at a date later than the original date for the hearing.
Mr Hobbs, taking into account submissions made on behalf of the Registrar, held that Rules 33A(6) and 68 contain different powers enabling the Registrar to alter a timetable according to different criteria in order to deal with cases justly in accordance with the overriding objective.  Green Baby’s application to adduce further evidence under Rule 33A(6) was not an application to retrospectively extend the period of time for filing evidence governed by Rule 68(5).

Mr Hobbs held that the HO had not made a material error in re-fixing the substantive hearing to allow Green Baby’s additional evidence to be admitted, although the reasoning upon which that decision was made required re-assessment.

Mr Hobbs awarded Mr Hussain, costs in relation to the points decided by the HO but held that Mr Hussain should have written to the HO asking her to clarify her decision on costs rather than raising it by way of appeal.



Gilmar Spa v Ice Clothing Ltd

Application (and where applicable, earlier mark)  

- clothing, footwear, headgear (25)

(Unregistered, used in relation to women’s clothing)


 Amanda Michaels dismissed the applicant’s appeal from the HO’s decision to uphold the opposition under s.5(4)(a). 

Ms Michaels upheld the HO in her decision that the relevant date for assessing the opposition under s.5(4)(a) was the priority date of the application.  It was not, as Gilmar Spa contested, its first use of the mark, as there was no use of that mark prior to the application.  In any event, the HO found that Ice Clothing was the senior user of the ICE mark so that, even if it were appropriate to consider the issue, the applicant would not have succeeded. 

Ms Michaels was very critical of the applicant running a ‘clean hands’ argument before her and the HO without referring to it in the counter-statement or evidence. It was effectively an allegation that Ice Clothing were acting dishonestly or in bad faith.  There was no evidence of this at all.  The allegation appeared to be based purely on the submission that Gilmar Spa was the senior user (which the HO disagreed with); the highest that the point could be put was that there was honest concurrent use by both parties.  The appeal was dismissed.



Copyright infringement 

Twentieth Century Fox Film Corporation and Ots v Newzbin Ltd* (Kitchin J; [2010] EWHC 608 (Ch); 29.03.10)

The claimants are the owners of copyright in a number of feature films.  Newzbin operates a website through which users can search for content, including films, and download unlicensed copies.  The Judge found Newzbin liable for authorising its users’ acts of copyright infringement and for entering into a common design with such users.  The Judge also found Newzbin liable under Section 20 CDPA for communicating the claimants’ copyright works to the public.  The Judge granted an injunction in relation to the claimants’ works but refused to extend it to all works on the Newzbin site.

Newzbin website

The Newzbin website trawls through content uploaded to the online discussion network, Usenet.  Only files of a small size may be uploaded to Usenet, so users wishing to post large files such as films are required to split the item into multiple parts.  The Newzbin website indexes material from Usenet, collates individual files into a single entry and provides descriptive information about such entry. Premium users (who pay a subscription) have access to a facility, which enables them to quickly and easily reassemble the original work from its component parts for download.

The Judge proceeded upon the basis that the claimants’ copyrights were infringed by users of the Newzbin website.


Taking into account the structure of the Newzbin website, the categorisation of content and the encouragement given by Newzbin to its editors (responsible for grouping, naming and describing content) to provide descriptive information about the films of a type regarded by the Federation Against Copyright Theft Limited as indicative of piracy e.g. information regarding source, video format, region, subtitles and language), the Judge found that Newzbin were aware (i) that the vast majority of films on its site were commercial and thus likely to be protected by copyright and (ii) that Newzbin users who made use of the Newzbin facility to download films were infringing that copyright.


The Judge held that to be liable for ‘authorisation’, Newzbin must have expressly or impliedly granted, or purported to grant, its users the right to infringe the claimants’ copyright.  Mere enablement, assistance or even encouragement would not be enough (CBS Songs v Amstrad, HL, [1988] 1AC 1013).  The Judge considered it material that the Newzbin website was a sophisticated facility, which saved its paying users the substantial task of manually identifying the individual files making up each film and enabled them to easily reassemble the original work from its component parts, thereby inevitably making an infringing copy.  The latter facility was created by Newzbin and was entirely within its control; although it would have been easy for Newzbin to install a filtering system to prevent users from being able to download copyright works, it had not done so.  On this basis, the Judge concluded that a reasonable user would deduce that Newzbin was purporting to possess the authority to grant the user permission to copy any film and that Newzbin sanctioned such copying.

Procurement and participation in a common design

The Judge held that the above matters were also relevant to the issue of common design.  The Judge found that the Newzbin website was designed and intended to make infringing copies of films available to its users, with the site being structured in such a way so as to promote such infringement.  Newzbin was therefore sufficiently involved in the users’ acts of copyright infringement so as to make them its own. Accordingly, the Judge held Newzbin liable for participation in a common design.  The Judge did not consider it a bar to liability that the claimants were unable to point to specific acts of infringement by particular infringers which Newzbin could be said to have procured.

Communication to the public

The Judge found that Newzbin had intervened in a highly material way to make the claimants’ films available to a new audience and thus Newzbin would be liable under Section 20(2)(b) CDPA.


The Judge ordered an injunction to restrain Newzbin from infringing the claimants’ copyrights in relation to their repertoire of films but refused to extend the injunction to prevent Newzbin from indexing all potentially infringing material posted on Usenet under Section 97A because the rights of the other rights holders were wholly undefined and so the scope of the injunction would be uncertain.  The Judge held that the court hearing the damages enquiry ought to consider additional damages for flagrancy under Section 97.



Community Registered DesignGrupo Promer Mon Graphic SA v OHIM; PepsiCo Inc. (GC (Fifth Chamber); T-9/07; 18.03.10)

PepsiCo successfully registered the design reproduced below for ‘promotional items for games’ as a Community Registered Design (CRD).

Grupo Promer applied to invalidate PepsiCo’s CRD under Articles 52 and 25(1)(b) and (c) of the Community Designs Regulations, relying on its earlier CRD registered for ‘metal plates for games’ reproduced below:


The Invalidity Division declared the contested design to be invalid under Article 25(1)(d), but this was overturned by the BoA. The GC annulled the BoA’s decision, holding that the differences between the designs at issue were not sufficient to conclude that they produced a different overall impression on the informed user.

The GC’s reasoning is summarised below.

Bad faith

Grupo submitted that the BoA had interpreted the Regulations restrictively as it had failed to take account of PepsiCo’s bad faith.  The GC confirmed that ‘bad faith’ was not a ground for invalidity of a RCD.  The list of grounds of invalidity in Article 25(1) was exhaustive.

In conflict

Under Article 25(1)(d), a RCD may be invalidated if it is ‘in conflict’ with a prior design. ‘Conflict’ is not defined in the Regulations.  The GC agreed with the BoA that a RCD would be in conflict with a prior design when, taking into consideration the degree of freedom of the designer, that design does not produce on the informed user a difference overall impression from that produced by the prior design.


The BoA was correct to conclude that the product in question belonged, within the broad category of promotional items for games, to the particular category of game pieces known as ‘pogs’, ‘rappers’ or ‘tazos’.  The GC held that, whilst the indication of the product to which the design was to be applied, as indicated in the RCD application, should be taken into account, it was not determinative.  Instead, the tribunal should look to the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function.

Informed user

The GC concluded that the informed user could be a child in the approximate age range of 5 to 10 or a marketing manager in a company that made products that were promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’. 

Degree of freedom

The GC concurred with the BoA that the designer’s freedom in the article was severely restricted since he had to incorporate certain common features into the design and also ensure the product was inexpensive, was safe for children and fitted with the other products which the company promoted.

Overall impression

The GC stated that the designs must be compared by examining their similarities and differences, taking into account the designer’s degree of freedom, in order to ascertain whether the BoA was entitled to conclude that the designs created a different overall impression.  The GC noted that insofar as the similarities between the designs related to the common features, this would have only a minor importance in the overall impression.  Furthermore, as the degree of freedom was restricted, it was more likely that minor differences would be sufficient to produce a different overall impression.

The GC reviewed a number of similarities between the designs, some of which (namely, that the designs both contained a concentric circle approximately one third away from the edge to the centre; the similarity of the raised rounded edge of the disc in relation to the intermediate area of the disc between the edge and raised central area; and the similar respective dimensions of the raised central part and intermediate area of the disc between the edge and the raised central part) related to elements which the designer was free to develop.  These similarities would attract the informed user’s attention as the upper surfaces are the most visible.

The differences observed by the BoA (namely, the additional two circles in PepsiCo’s design and the differences in the curvature) were not sufficient to produce a different overall impression on the informed user. The BoA had erred in this respect and its decision was annulled.


UK Unregistered Design

Red Spider Technology (“Red Spider”) v Omega Completions Technology (“Omega”)* (Mann J; [2010] EWHC 59 (Ch); 21.01.10)

The Judge dismissed Red Spider’s claim for infringement of its UK patent for a water injection valve and its claim for infringement of UK unregistered design right in the valve design.  The Judge held that in order to infringe Red Spider’s design right under Section 226 CPDA, Omega must be found to have copied the Red Spider valve, or a rendition of it. Red Spider’s case on copying was that Omega had reproduced various aspects of the Red Spider valve by copying from the drawings in the patent specification.  The Judge found that such drawings in fact pre-dated the valve (and design documents therefore) and did not represent the final version.  The drawings were therefore not ‘renditions’ of the Red Spider valve and could be copied by Omega without infringing Red Spider’s design rights.

Obiter, the Judge considered the scope of Red Spider’s alleged design right and concluded that certain features such as “the concept of having [e.g.] rectangular windows” would be excluded from protection as a method or principle of construction.  The Judge confirmed the principle that although Red Spider might be entitled to claim protection for particular embodiments of certain features, the general idea or concept of that feature could not form the subject of design right.

Omega denied copying in any event and claimed that it had merely been inspired by the drawings.  On a comparison of the Omega valve with the alleged design, the Judge could not see reproductions of actual features and therefore concluded that Omega had taken no more than ideas.  This was insufficient to found a claim for infringement of design right.

Reporter’s note: This case is reported in relation to the design aspects only.



Meaning of ‘perpetual’ in a software licence

BMS Computer Solutions Ltd (“BMS”) v AB Agri Ltd (“Agri”)* (Sales J; [2010] EWHC 464 (Ch); 10.03.10)

BMS succeeded in its application for summary judgment on construction of the term “perpetual” in a software licence. BMS granted the licence to Agri’s predecessor company and also entered into an agreement to provide technical support (the ‘Support Agreement’).  The licence contained termination provisions, including that the licence would terminate on termination of the Support Agreement.  BMS, the predecessor company and Agri later entered into a variation agreement under which the licence and Support Agreement were novated so as to take effect between BMS and Agri and certain new terms were introduced, including that the licence be made perpetual.  Agri subsequently terminated the Support Agreement but contended that it was contractually entitled to continue to use the software in perpetuity.

Meaning of Perpetual

The Judge held that the word “perpetual” can mean “never ending” in the sense of being incapable of being brought to an end, or it can mean operating without limit of time.  The Judge preferred the latter construction on the facts and held that the effect of the variation agreement was to grant a licence of indefinite duration, albeit that this was subject to the pre-existing contractual provisions governing termination.  Thus, when Agri terminated the Support Agreement, it activated the termination provisions in the licence, bringing the “perpetual” licence to an end.  The Judge held that where there was a clear commercial need for the termination provisions to remain operative, the parties would need to include clear and explicit language in their agreements to indicate any intention to the contrary.



Remedies for Breach of Confidence

Vercoe & Ots v Rutland Fund Management Ltd (“RMFL”) & Ots* (Sales J; [2010] EWHC 424 (Ch); 05.03.10)

Vercoe and Pratt succeeded in their breach of contract and breach of confidence claims arising out of the defendants’ behaviour during the acquisition of a company.  In relation to the breach of confidence claim, the Judge held that the claimants were not entitled to an election between damages and an account of profits. 


Vercoe and Pratt were business associates who had identified a national pawn broking business as an attractive acquisition target.  Vercoe and Pratt developed a detailed business plan for the acquisition, which envisaged that post-acquisition Vercoe would be appointed CEO and Pratt Commercial Director of the company.  Absent sufficient capital of their own, Vercoe and Pratt approached several venture capitalist companies, including RFML with a view to securing equity funding.  Vercoe and Pratt entered into a confidentiality agreement with RFML, pursuant to which the full details of the business plan were disclosed to RMFL for the purposes of progressing the acquisition as outlined in the plan i.e. with Vercoe and Pratt in their proposed management roles.  RFML proceeded to make use of the disclosed information, secured funding for the transaction and commenced its due diligence.  Pratt was then told that he was to have no management role and Vercoe would be given a side-role rather than that of CEO.  Relations broke down and neither Vercoe nor Pratt ended up with any role in the company following the acquisition.

The company was later floated on the stock market and reported to be making a substantial profit.  Vercoe and Pratt brought proceedings for breach of contract, confidence and fiduciary duty, submitting that they had a complete discretion in relation to their claim for breach of confidence to choose between damages and an account of profits, the latter of which amounted to a significant sum. 

Breach of Contract

The Judge found RFML liable for breach of contract in respect of its continued use of the confidential information (so defined in the confidentiality agreement) for a purpose other than the ‘permitted purpose’, being the acquisition of the company with predetermined post-acquisition roles for Vercoe and Pratt.

Breach of Confidence

The Judge held that the information supplied by the claimants to RFML identifying the company as an attractive acquisition prospect and setting out a business plan was confidential information, which was of commercial value and which was imparted in circumstances importing an obligation of confidence.  RFML made use of such confidential information for unauthorised purposes and was thus liable for breach of confidence.

Appropriate Remedy for Breach of Confidence

The Judge held that a claimant would be entitled to an account of profits for breach of confidence if the strength of his interest in performance of the obligation (i.e. in the defendant respecting the obligation of confidence), judged on an objective basis, was such that it would make it just and equitable that the defendant should retain no benefit from his breach. 

In some situations where the rights of the claimant are of a powerful kind and his interest in full performance is recognised as being particularly strong (for example in cases involving real property, intellectual property such as patents or where there is a fiduciary relationship), the claimant would probably be entitled to a choice of remedy.  However, in a normal commercial relationship, a degree of self-seeking and ruthless behaviour is expected and accepted.  Conversely, in a fiduciary relationship, where there are special obligations of trust, it is more important to deter abusive behaviour and thus an election of remedy ought to be available.

In the present case, the Judge found that there was no fiduciary relationship and that the confidential information was not of a type analogous to intellectual property (for example about a secret design or process).  The Judge found that the relationship between the parties was a contractual one and so it would not be appropriate to order an account of profits.  The Judge therefore awarded ordinary damages for breach of a negative contractual covenant, applying the principles laid down in Wrotham Park Estate Co Ltd v Parkside Homes Ltd 1974 1 WLR 798, namely what is the price at which RFML should be taken to have bought release from the covenant?  The Judge found that any commercial deal between the claimants and RFML would have been concluded on the basis of an equity allocation by RFML to each of Vercoe and Pratt.  Accordingly, the Judge determined that a reasonable price for RFML to be taken to have paid Vercoe and Pratt for leave to use the confidential information for unauthorised purposes was 5% and 2.5% equity respectively.


Katharine Stephens, Zoe Fuller and Emily Peters

Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Nick Boydell, Victoria Evans, Emily Forsyth, Tim Harris, Mary Smillie, Victoria Gardner, Abby Minns, Amy Williams, Dania Rifaat, Hilary Atherton, Mark Livsey, Claire Barker, Nathan Capone, Laura Holt and Jack Jones.

The reported cases marked * can be found at & CJ and GC decisions can be found at