This month we report on the AG's opinion on keyword advertising using marks with a reputation in Interflora v Marks & Spencer, we report on the first trial under the new Patents County Court rules in Westwood v Knight and look at the Court of Appeal's reference to the Court of Justice on the meaning of 'transmission' in the Database Directive in Football Dataco Ltd v Sportradar GmbH.

Decisions of the GC (formerly CFI) and CJ (formerly ECJ)

Case   CJ
Agencja Wydawnicza Technopol sp. z o.o v OHIM
Application (and where applicable, earlier mark)  

- brochures, periodicals, including periodicals containing crossword puzzles and rebus puzzles, newspapers (16)


The CJ dismissed the appeal from the GC’s decision to refuse the mark under Art 7(1)(c) (reported in the CIPA Journal, December 2009).

The CJ concluded that the GC had not misinterpreted the scope of Art 7(1)(c).

Art 7(1)(c) did not require the sign at issue to be the usual means of designating the relevant goods/services; it was sufficient that the sign could be used for such purposes.

The CJ noted that in order for a sign composed exclusively of numerals to be refused registration under Art 7(1)(c) on the grounds that it designated a quantity, it must be reasonable to believe that, in the mind of the relevant public, the quantity indicated by those numerals characterised the relevant goods/services. This would be the case where the application referred to a category of goods, the content of which was easily and typically designated by the numeral indicating the number of units they contained.

It was therefore open to the GC to conclude that members of the relevant public would take the sign 1000 to indicate the number of pages in puzzle books or puzzles contained in such books.


Case   GC
Ifemy’s Holding GmbH v OHIM; Dada & Co. Kids Srl
Application (and where applicable, earlier mark)  


- clothing, footwear, headgear (25)

- clothing, footwear, headgear (25)
(German international mark)


The GC dismissed the appeal from the BoA’s decision which concluded that OHIM had not infringed Rule 80(2) of Regulation No 2868/95 by refusing to take into account documents intending to provide proof that the earlier mark had been put to genuine use, but had simply applied Rule 22.

Ifemy’s had faxed a letter to OHIM on the final day of the period set by OHIM to supply evidence of genuine use of the earlier mark. The letter included a list of documents, but not the documents themselves; OHIM only received the documents 9 days later by post.

The GC concluded that OHIM had not infringed Rule 80(2) since Ifemy had failed to provide any proof that it had attempted to send the documents by fax. Furthermore, the BoA had not infringed the principles of equal treatment or fair competition by holding that the relevant date, for the purpose of Rule 22(2), was the date on which OHIM received the documents.


Ford Motor Company v OHIM; Alkar Automotive SA


Application (and where applicable, earlier mark)

- luminous signs and flashing lights for vehicles (9)
- lighting apparatus for vehicles (11)
- vehicles (12)

- motor land vehicles and parts and fittings therefore (12)
- vehicle carpets and mats (27)
- motor vehicle maintenance and repair services (37)

- parts and fittings for motor land vehicles (9) (12)
- printed publications (16)
- non-luminous signs, seat cushions, pillows, (all being parts and fittings for motor land vehicles) (20)
- cleaning utensils for vehicles (21)


The GC upheld the BoA’s finding that there was no likelihood of confusion between the mark applied for and the earlier marks under Art 8(1)(b).

The level of attention on the part of the relevant public when purchasing the goods in question was high.

The BoA was correct to find that the relevant public would perceive significant visual difference between the respective marks. This would be the case irrespective of how the mark applied for was perceived (either as (i) ‘c a’; (ii) ‘ca’; (iii) as a circle open to the right in which is written the letter ‘a’; or (iv) as a circle open to the right in which the number 4 is written diagonally).

Phonetically, the BoA was correct to find that the relevant public would perceive the mark applied for as an abbreviation rather than a word and therefore it would not be pronounced as ‘ka’. As such the BoA was entitled to find that the phonetic similarity between the marks at issue was not ‘notable’.

No conceptual comparison was possible as none of the marks at issue had a meaning.

Taking into account the fact that the goods are usually purchased after having been seen, the high level of attentiveness of the relevant public and the visual and phonetic differences between the relevant marks, the GC agreed with the BoA’s finding that there was no likelihood of confusion, even though the goods at issue were partially identical. This finding could not be called into question by the earlier marks’ very significant distinctive character.


Decisions not yet in English


Longevity Health Products Inc v OHIM; Performing Science LLC


Application (and where applicable, earlier mark)  

- pharmaceutical preparations, veterinary preparations, preparations for health care, dietetic substances for medical purposes, mineral food supplements and vitamin supplements (5)


The GC upheld the BoA’s decision to declare the mark invalid under Arts 52(1)(a) and (7)(1)(d) (the sign 5 HTP is an abbreviation of the chemical 5-hydroxytryptophan).
Furthermore, the GC held that the applicant had not demonstrated that the mark had acquired distinctive character through use under Arts 7(3) and 52(2).



Vicente J. Jiménez Sarmiento v OHIM; Oxygéne sport international


Application (and where applicable, earlier mark)  

- various goods (18, 25, 28)

- various goods (25)


The GC upheld the BoA’s decision to dismiss as inadmissible the appeal from the Opposition Division’s decision to reject the opposition under Arts 8(1)(a) and (b).

Mr Jiménez Sarmiento had submitted his Grounds of Appeal out of time under Rule 70 of Regulation 2868/95.

Case GC
Visti Beheer BV v OHIM; Meister & Co AG
Application(and where applicable, earlier mark)


- precious metals and their alloys and goods made thereof or coated therewith (14)

- precious metals and their alloys and goods made thereof or coated therewith, jewellery, precious stones, clocks and timepieces (14)


The GC upheld the BoA’s decision to allow the opposition under Art 8(1)(b).

There was a likelihood of confusion between the marks.

Case GC
CheckMobile v OHIM
Application(and where applicable, earlier mark) CARCHECK
- various goods and services in Classes 9, 16, 35, 36, 38, 41, 42 and 45
Comment The GC upheld the BoA’s decision to partially reject the application in relation to certain goods and services applied for on the grounds that the mark was descriptive in nature in relation to those goods and services under Art 7(1)(c), being, inter alia, Class 9: control apparatus and instruments, Class 16: teaching materials, Class 41: training, Class 42: technological services and research and Class 45: legal services.


Keyword advertising using marks with a reputation

Interflora, Inc. & Anr v Marks & Spencer Plc & Anr (AG Jääskinen for the CJ; Case C-323/09; 24.03.11)

In a case between Interflora and M&S, concerning M&S’ use of Interflora’s trade mark INTERFLORA in keyword advertising ([2009] EWHC 1095 (Ch)) reported in the CIPA Journal, June 2009 and December 2009, the High Court made references to the CJ on certain matters of interpretation of the Trade Marks Directive 89/104 ([2010] EWCH 925 (Ch), reported in the CIPA Journal, May 2010). The questions referred concerned the interpretation of the protection afforded under Articles 5(1)(a) and 5(2) in the context of keyword advertising.

Interflora operated a worldwide flower delivery network which was made up of independent florists with whom orders could be placed. Interflora’s website allowed orders to be placed via the internet and fulfilled by the network member closest to the delivery address. Interflora owned both a UK and Community trade mark for INTERFLORA. It was common ground that these marks had a substantial reputation in the UK and EU. M&S had reserved the keyword “interflora” as well as a number of variants and expressions including the word “interflora” in Google’s AdWords referencing service. When internet users entered the search term “interflora”, M&S’ ad was displayed under the heading sponsored links. The ad did not contain or refer to the INTERFLORA mark in any way.

With respect to the scope of protection under Article 5(1)(a), the AG reiterated the CJ’s judgment in Google France (C-236/08 to C-238/08, reported in the CIPA Journal, April 2010). However, in the AG’s opinion, the INTERFLORA trade mark had acquired a “secondary meaning” denoting a commercial network of florists providing a uniform service. In light of this secondary meaning, consumers who typed in the keyword and saw the display of M&S’ ad were likely to make an association that M&S were part of the Interflora network.

In relation to the question as to whether the analysis on Article 5(1)(a) was impacted by the fact that the search engine operator did not permit trade mark owners in the UK to block keywords that were identical to their trade marks, the AG commented that this fact was irrelevant to the advertiser’s liability. The AG did however state that if the referencing service did allow trade mark owners to block keywords, this point might be relevant in some cases to an inference of implied consent by trade mark owners.

The AG concluded that, under Article 5(2), unless the trade mark was unique or inherently highly distinctive, a link between the trade mark and the identical key word typed into the search engine could not be presumed. Identical word marks were often registered by multiple proprietors in relation to dissimilar goods or services. There are trade marks composed of common or descriptive words in relation to certain goods or services which have gained a reputation for goods or services for which they are not descriptive. In such instances, it could not be assumed that the internet user’s intention was to search for the goods and services for which the trade mark had a reputation.  Where a trade mark was not unique, the existence of a link would depend on the marketing information displayed in the ad appearing in the sponsored link.

In cases of double-identity, the risk of dilution by blurring was not through the loss of distinctiveness by the decrease in the trade mark’s capacity to distinguish the goods and services of the trade mark owner from its competitors but the risk of degeneration of the mark through use of the trade mark by others in such a way that contributed to its development in becoming a generic term. Following the CJ’s decision in Google France, the AG concluded that such blurring could only occur if the sign was mentioned or displayed in the ad and the marketing message or communication in the ad used the sign in a generic sense to refer to a category or class of goods or services.

On the issue of taking unfair advantage of the distinctive character or repute of that trade mark, the AG commented that in selecting the word “interflora” as a keyword, it was obvious that M&S had taken advantage of the repute of that trade mark and that what needed to be considered was the fairness of that use. The relevant use in this case, i.e., the selection of the trade mark as a keyword in internet search engine advertising for the purpose of presenting a commercial alternative to the goods or services protected by a trade mark with a reputation should, according to the AG,  count as due cause in the context of online marketing. Otherwise, keyword advertising using well-known trade marks would be as such prohibited.  The trade mark owner could only prohibit such use if the content of the ad was objectionable and amounted to free-riding. 

As stated in Google France, an increase in the cost-per-click for the trade mark owner to advertise its own trade marks through keyword advertising did not affect the advertising function of that trade mark and, in the AG’s opinion, did not per se constitute unfairness or taking advantage of the repute of the trade mark.


Summary judgment granted despite defendant disputing jurisdiction

Elvis Presley Enterprises, Inc (“EPE”) v Agostino Carollo (t/a Everness)* (Sir William Blackburne; [2011] EWHC 170 (Ch); 02.02.11)

EPE succeeded in its claim for summary judgment that Mr Carollo was liable for trade mark infringement, passing off and breach of contract. EPE, which was incorporated by the executors of the estate of Elvis Presley, was engaged in the worldwide licensing of Elvis related products and services and was the proprietor of various Community and UK trade marks relating to the names, “Elvis Presley”, “Elvis” and “Graceland” for goods including records, cassettes, CDs and printed matter. EPE required third party licensees to use a hologram on licensed products.

EPE granted Mr Carollo a number of licences to use its trade marks in connection with specific products. Each licence contained an express prohibition of use of the trade marks other than as permitted by the licence. Having decided to produce a CD containing remixes of various Elvis songs, Mr Carollo approached EPE for a licence to use various marks. EPE refused to grant the licence but Mr Carollo launched the CD, complete with packaging bearing EPE’s trade marks and the official licensee hologram, anyway. The CD was available for purchase by UK customers via Mr Carollo’s website. After making a trap purchase in the UK, EPE brought proceedings in the English courts for trade mark infringement, passing off and breach of contract.

Mr Carollo responded by indicating that he intended to dispute jurisdiction on the basis that he was an Italian citizen based in Italy. Mr Carollo also stated that there was in any case no infringement because there were valid contracts in place authorising him to do what EPE complained he had done in breach of its rights.

Despite being given a number of extensions of time to file an application to dispute jurisdiction, Mr Carollo did not do so. Sir William Blackburne therefore held that the English courts had jurisdiction under Article 24 of the Brussels Regulation (Regulation EC No. 44/2001) on the basis that Mr Carollo entered an appearance and accepted jurisdiction. As to Mr Carollo’s substantive defence, Sir William Blackburne held that the onus was on Mr Carollo to adduce evidence as to what that contract was. As he had not done so, the Judge was satisfied that EPE’s claim was amply justified and its claim for summary judgment should succeed. This was so even though Mr Carollo was not present at the hearing because he had been given ample opportunity to attend, and there was no evidence that he had taken any positive steps in the case (such as instructing counsel) but had rather merely continued with his infringing activities.


First trial in Patents County Court under new rules

Dame Vivienne Westwood O.B.E. v Anthony Edward Knight* (Judge Birss; [2011] EWPCC 008; 22.03.11)

Dame Vivienne Westwood O.B.E. succeeded in various claims brought against Mr Knight for trade mark and copyright infringement and passing off.

Vivienne Westwood is a well known British fashion designer whose goods are sold in over 700 shops worldwide. Ms Westwood uses a variety of registered and unregistered trade marks and images in which copyright subsists in the course of her business. Ms Westwood alleged that Mr Knight, also a fashion designer who sold clothing and accessories on the internet, had used the same or substantially similar marks on his products. Ms Westwood also sought revocation of Mr Knight’s word mark RED PLANET WESTWOOD and the following device marks, all registered for goods in class 25:


 "Orb mark"

 “Cherub mark”

Trade Mark Infringement
Ms Westwood owned the word mark VIVIENNE WESTWOOD for goods in class 25 and the following device marks:



“Westwood Orb”
(class 25)

“Westwood Orb and Script”
(class 25)

(class 25)

(classes 14, 18, 25)

Judge Birss found that all of these marks had goodwill and reputation in the UK, particularly VIVIENNE WESTWOOD and the Westwood Orb mark, as these were used universally.

Mr Knight used the word VIVIENNE in close proximity to WESTWOOD in descriptions for his goods, such as ‘red planet westwood co shirt by designer vivienne may’. The Judge found that this use infringed the VIVIENNE WESTWOOD mark under Article 5(1)(b). The words VIVIENNE and WESTWOOD were particularly distinctive to the average consumer concerned with fashion so there was a likelihood of confusion. The addition of the surname “May” may reduce the risk of confusion but not enough to make a material difference. In support of confusion, there were two examples from eBay, which showed Mr Knight’s customers had thought they had bought a genuine product of Ms Westwood.

The Orb Mark
Mr Knight used an orb device in a variety of forms, although the Judge noted that it was never exactly the same as the Westwood Orb mark. The Judge analysed four uses, the Orb mark, the Cherub mark and two orbs used on goods as shown. 


The Judge concluded that although Mr Knight varied his orbs in different ways, all conveyed the same conceptual impression as the Westwood Orb mark. Thus, they all infringed the Westwood Orb mark under Article 5(1)(b). Accordingly, the Orb mark and Cherub mark were also invalid under Sections 47(2) and 5(2) as the Westwood Orb mark was an earlier registered trade mark. The addition of the words or the cherub/satyr did not negate the likelihood of confusion on behalf of the reasonably circumspect consumer.

Mr Knight sold a t-shirt with an arm and cutlass device and the words Saint Artjunkie. Judge Birss held that there was no infringement of the CTM as a prominent element was the word ANGLOMANIA which Mr Knight did not use.

Slogan Mark
The Judge held that Mr Knight’s use of the slogan on t-shirts and on his websites used to promote his clothing was infringement under Article 5(1)(a). The logo used was identical to the Ms Westwood’s Slogan mark and was used either on identical goods (clothing) or on websites used to promote clothing which the Judge held to be use in relation to clothing.

Reputation/Article 5(2)
Judge Birss considered that if he was wrong on their being a likelihood of confusion, there would still be infringement of the registered marks under Article 5(2).  All had the necessary reputation despite the small volume of sales. Applying Hasbro v 123 Nahrmittel [2011] EWHC 199 (Ch), reported in the CIPA Journal, March 2011, the Judge held that Mr Knight’s acts in relation to each of the marks supported a case of infringement under Article 5(2) as they gave rise to an association with Ms Westwood’s mark which took unfair advantage of the distinctive character of Ms Westwood’s marks by misappropriating the enormous cachet attached to them. However, Mr Knight’s use was not detrimental to the distinctive character of the marks. There was no real evidence that Mr Knight’s websites were of poor quality; but in any event the detriment point did not depend on a subjective assessment of whether they were or not as the websites used by Ms Westwood and Mr Knight were different.

Passing Off
An even larger number of names and marks fell to be considered under the passing off cause of action, namely: (i) Red Label; (ii) Let it Rock; (iii) Too fast to live too young to die; (iv) World’s End; (v) the arm and cutlass; (vi) the Satyr/Cherub; (vii) I love crap; (viii) the Lips; (ix) AR, Active Resistance to Propaganda; and (x) Destroy.

On assessing the use made of each of these marks by Ms Westwood or her businesses and the value of sales made under the marks, Judge Birss found that all of the unregistered marks had protectable goodwill and reputation of some sort attached to them (but not necessarily when used in isolation).

Red Label
Ms Westwood had had a Red Label line of womenswear since 1992. On the evidence, Judge Birss held that Ms Westwood was entitled to substantial goodwill and reputation in “Red Label” when it appeared in association with the Westwood Orb mark and/or the words Vivienne Westwood. Mr Knight was found to have frequently used the term “Red Planet Westwood” either on its own or with one of his orbs. He had also registered RED PLANET WESTWOOD as a trade mark. The Judge held that the use of “Red Planet Westwood” amounted to passing off. There was the likelihood of confusion on the part of a member of the public familiar with Ms Westwood’s goodwill and reputation in the UK and in particular Ms Westwood’s Red Label line of womenswear and the Westwood Orb mark (which the word planet could be considered to be alluding to). When “Red Planet Westwood” was used in combination with one of Mr Knight’s orbs the likelihood of confusion was enhanced further.

Following these findings of passing off, the Judge held that Mr Knight’s RED PLANET WESTWOOD trade mark and the Orb mark were invalid under Sections 47(2) and 5(4).   

Let it Rock, Too fast to live too young to die, World’s End
“Let it Rock”, “Too fast to live too young to die” and “World’s End” had all at some time been the name of Ms Westwood’s shop on the King’s Road. The marks had also been used in a variety of other ways over the years so that Ms Westwood commanded a substantive goodwill and reputation in them. In relation to “Let it Rock”, the Judge found that Ms Westwood had retained goodwill and reputation from when it had been first used as the name of Ms Westwood’s shop in 1971 even though the mark had not been given prominence by Ms Westwood over the years. This goodwill had then been cemented by the launch of a fragrance in 2008 branded “Let it Rock”. In relation to “Too fast to live too young to die”, although volumes of sales in recent years under this mark were small, a close association in the public mind between the mark and Ms Westwood had always existed because of Ms Westwood’s fame and the fame associated with the shop in the 1970s.   

In relation to “Let it Rock” and “World’s End”, the Judge held that Mr Knight’s actions, by using these slogans with other famous Vivienne Westwood marks (such as the word “westwood”, an orb device etc) in relation to clothing, amounted to passing off. The public clearly associated these slogans with Ms Westwood and their use by Mr Knight in this way would deceive them. The case did not require consideration of whether using “Let it Rock” or “World’s End” on their own amounted to passing off as this was not what Mr Knight was doing. In relation to “Too fast to live too young to die”, the Judge found that use of the words alone amounted to passing off as the slogan itself was associated in the public mind with Ms Westwood and someone encountering its use in relation to clothing would wrongly take it as an indication that the goods were those of Ms Westwood’s business. 
The Satyr/Cherub
Starting from 1987 Ms Westwood used a satyr/cherub mark in various ways, such as on invitations, brochures, accessories etc, and in a variety of forms, including having the figure hold the Westwood Orb. Judge Birss held that Ms Westwood had protectable goodwill and reputation associated with this mark, especially when holding the Westwood Orb which the Judge found was a highly distinctive image in its own right. For this reason, the Judge held that Mr Knight’s Cherub mark was invalid under Sections 47(2) and 5(4) as its use was liable to be prevented by passing off. The addition of the words “red planet jeans” did not negate the association with Ms Westwood’s goodwill. Any use of the Cherub mark by Mr Knight would therefore also be an example of passing off.

The arm and cutlass, I Love Crap and The Lips
The arm and cutlass device had, since its first use in 1980, been associated with World’s End and, since 1993, with the mark ANGLOMANIA. The Judge held that Ms Westwood had protectable goodwill and reputation associated with the arm and cutlass at least when it was linked to other Vivienne Westwood marks. The “I Love Crap” logo and image of a model’s lips were also found to have protectable goodwill and reputation. Although sales of goods under the marks were small the marks had been publicised widely in other ways.  

The conduct complained of was: the sale of a t-shirt with an arm and cutlass device and the words Saint Artjunkie; the sale of t-shirts bearing a logo essentially the same as Ms Westwood’s ‘I Love Crap’ logo and sale of such t-shirts under and by reference to other marks associated with Ms Westwood (such as the words WESTWOOD and VIVIENNE); and use on t-shirts of an identical lips image to Ms Westwood’s.

In all cases the t-shirts themselves did not have any other of Ms Westwood’s marks on them (and in the arm and cutlass example included words not associated with Ms Westwood at all). However, although the Judge commented that these were the weakest cases out of all the examples considered, he was satisfied that this did amount to passing off. This was on the basis that there was a risk of confusion because the t-shirts appeared on Mr Knight’s website amongst all the other uses of Vivienne Westwood marks and the purchaser would therefore encounter the t-shirts in that context. The Judge did not decide on what the position of the t-shirts would be out of context.
AR, Active Resistance to Propaganda
The AR logo and “Active Resistance to Propaganda” slogan were first used for the Spring/Summer 2006 show. In 2007 the Active Resistance to Propaganda manifesto was published which attracted significant media coverage. The Judge held that Ms Westwood had protectable goodwill and reputation in AR and the “Active Resistance to Propaganda” slogan and manifesto. Mr Knight’s t-shirt which carried an essentially identical AR logo, the words “Active Resistance to Propaganda” and “Manifesto” (as well as Ms Westwood’s skull and crossbones logo) exploited the connection between those marks and this amounted to passing off.

The DESTROY t-shirt was an iconic design comprising a symbol for the Anti-Christ, a Nazi swastika and the Queen’s head on a postage stamp with the word DESTROY emblazoned across. Ms Westwood did not use the DESTROY mark anymore but Judge Birss found that despite there being no existing business exploiting the image, Ms Westwood still had residual goodwill in the image as a clear reputation remained in the public mind associating the image with Ms Westwood and her business.

Mr Knight created a design consisting of an inverted Christ on the Cross with a swastika under the word DESTROY. His application to register this as a trade mark was refused. The Judge held that use of such a design would amount to passing off. The sale of a t-shirt just carrying an inverted Christ on a Cross design also amounted to passing off as when the public encountered the t-shirt on Ms Westwood’s website in the context of the other links to Ms Westwood they would associate the product with Ms Westwood.

Mr Knight’s Conduct as a Whole
The Judge also considered Mr Knight’s conduct taken as a whole and noted that on many occasions Mr Knight put together a number of words and images which were derivative of Ms Westwood and still associated with Ms Westwood. For example, three of the names Ms Westwood used for her shop over the years appeared amongst Mr Knight’s materials, as did the word WESTWOOD and Mr Knight’s orbs. The Judge held that the combinations served to reinforce the message that the goods were connected with Ms Westwood and found that Mr Knight’s business as a whole amounted to an exercise in passing off his own goods as those of Ms Westwood or her business. The evidence from eBay supported this conclusion. 

Copyright Infringement
Judge Birss held the following marks to be original artistic works in which copyright subsisted: the Westwood Orb mark (created in 1985); the Westwood Orb and Script mark (created in 1992); the Slogan mark (created in 1972); the “I love crap” logo (created in 2007); and the AR logo. Mr Knight was found to have copied all of the works except for the “I love crap” logo. Although Mr Knight’s t-shirts bore a logo essentially the same as Ms Westwood’s “I love crap” logo and despite being satisfied Mr Knight’s design was derived from Ms Westwood’s, the Judge held that there was no copyright infringement as there was insufficient objective similarity between the two works.

All of the marks had been applied industrially. In the case of the Westwood Orb mark, Ms Westwood accepted Section 10 of the Copyright Act 1956 (the “1956 Act”) applied before commencement of the CPDA 1988. The transitional provisions in Schedule 1, paragraph 20 of the CPDA meant that Section 52(2) of the CPDA applied but the period of protection referred to in Section 52(2) was cut down from 25 years to 15 years. As the Westwood Orb mark had been applied industrially in 1985, the period of protection expired in December 2000. In the remaining three cases the periods of protection still had some years to run and Mr Knight’s use of these marks therefore amounted to copyright infringement. The Westwood Orb and Script mark and AR logo were created after the CPDA came in to force. Section 52(2) of the CPDA therefore applied giving a 25 year period before these works could be copied. The Judge accepted the evidence that the Slogan mark had not been industrially applied until 2002 and so, although Section 10 of the 1956 Act fell to be considered, it was held that the work was protected from copying until 31 December 2017.

Domain Names
Mr Knight had registered five domain names. Three were variations of the slogan “Too Fast to Live Too Young to Die”. Applying BT v One in a Million ([1998] EWCA Civ 1272) the Judge held that registration of these three domain names amounted to passing off as someone encountering these sites would think they were encountering a website associated with Ms Westwood. The Judge held that they also infringed under Article 5(2). The fourth and fifth domain names were “redplanetclothingcompany” and “letitrock”. The Judge thought neither satisfied either limb of BT v One in a Million. However, in the context of Mr Knight’s business as a whole and his approach to Ms Westwood’s marks it was clear Mr Knight used these domain names as part of his overall passing off. Accordingly the relief granted should be in respect of these domain names too.

The case was the first to be tried in the Patents County Court under the new procedural scheme which came into force in October 2010. It lasted one day and judgment was handed down on 22 March 2011, as had been ordered at the CMC. In the run up to and during the trial the Court showed a proactive and flexible attitude to case management, including convening a telephone hearing shortly before trial to deal with skeleton arguments. Judge Birss was extremely flexible about the timing of this hearing. He also dealt with last minute applications raised at this hearing by Mr Knight, who was representing himself. During the trial Ms Westwood raised allegations of fraud against Mr Knight and Mr Knight alleged that some of the documents exhibited to the witness statement of Ms Westwood’s main witness were fabricated. The Judge would not permit these allegations to be advanced as they required the relevant witness to be cross-examined and neither party had sought the permission of the Court to do this. The Judge noted that permission to cross-examine witnesses should be sought at the CMC. However, if issues of fraud arose after the CMC, the Court would consider applications made on proper grounds.       


Refusal to transfer case to the Patents County Court

Caljan Rite-Hite Ltd v Sovex Ltd* (Kitchin J; [2010] EWHC 669 (Ch); 18.02.11)

Kitchin J refused Sovex’s application for an order that the action be transferred to the Patents County Court on the basis that the case was not suitable for determination under the new procedural regime.

The action, which concerned a dispute as to title of the trade mark, Sovex, was originally commenced in the Trade Marks Registry after Caljan made an application to be substituted for Sovex as the proprietor of the mark. Sovex contended that the claim should be dealt with in the High Court and the Registrar ultimately made an order for transfer. The case proceeded in the High Court and a trial date was fixed. However, Sovex then made an application to have the case transferred to the PCC.

In considering whether such a transfer was appropriate, Kitchin J held that the material factors were the financial position of the parties, specifically whether a party could only afford to bring or defend the claim in the PCC and whether the claim was appropriate to be determined by the PCC having regard to its value, the complexity of the issues and the estimated trial length.  As to the first factor, despite accepting that Sovex was in a far from healthy financial state, the Judge held that it did have backers and investors who had made substantial sums available to date and may be prepared to make further sums available in the future. Furthermore, Sovex admitted that it would continue to defend the proceedings even if they remained in the High Court. As to the second factor, Kitchin J held that there could be no doubt that the claim was very important to both parties, the mark in suit having been used in relation to conveyors for over 50 years. Caljan said that the mark was worth over £500,000 and although Sovex disputed that figure, it nevertheless recognised that the mark was an integral part of its business. The Judge also held that the issues pertaining to the chain of title were complex and hotly disputed and their resolution would inevitably require disclosure, witness statements and cross-examination. Sovex intended to call six witnesses of fact, and Caljan would also likely call witnesses of its own. Accordingly, this was not a case that the court could determine on the basis of the parties’ statements of case and oral submissions and nor was there a realistic prospect that the trial would last no more than two days. The Judge refused to order a transfer.

Kitchin J also confirmed that Judge Birss had been right in Technical Fibre Products v Bell ([2010] EWPCC 011) and Westwood v Knight ([2010 EWPCC 016, reported above) to hold that the new PCC rules would apply to cases transferred from the High Court after 1 October 2010 regardless of whether they had been commenced in the High Court prior to 1 October 2010. Kitchin J was also of the opinion that the overriding objective required that any application for transfer should, in general, be made as soon as possible after the commencement of proceedings. The seven months between commencement of proceedings in the High Court and Sovex’s application for transfer was too long. 



Reference to CJ on meaning of ‘transmission’ in Database Directive

Football Dataco Ltd & Ots (“FDC”) v Sportradar GmbH & Anr (together “Sportradar”)* (Jacob, Wilson and Laws LJJ; [2011] EWCA Civ 330; 29.03.11)

In an appeal from the High Court decision ([2010] EWHC 2911 (Ch), reported in the CIPA Journal, December 2010), the Court of Appeal held that the online use of live match data from football matches did not infringe copyright.  The Court of Appeal allowed the allegation of database right infringement in respect of such use to proceed to trial in England, although they stayed the matter pending the referral of a question regarding where infringement occurred when such data was accessed from a website based outside the UK to the CJ. In so doing, the Court of Appeal upheld the decision of Floyd J insofar as he had held that the English court had jurisdiction to hear the database rights claim but referred a question to the CJ pertaining to Floyd J’s finding that “making available to the public” by online transmission was committed, and committed only where the transmission took place.

FDC exploited data relating to English and Scottish football matches. This data, which included goals, goal scorers, red and yellow cards, penalties and substitutions was compiled in a database known as “Football Live”. Sportradar provided live scores, results and other statistics relating to football and other sports to customers via the internet (“Sports Live Data”). The Sports Live Data was stored on web servers in Germany and Austria but could be accessed via links from elsewhere, including the UK.  Sportradar’s customers included Bet365 and Stan James, both of whom provide online betting services to customers located in the UK.

High Court Decision
FDC issued proceedings in April 2010 against Sportradar for infringement of the UK copyright and database right in Football Live. Sportradar challenged jurisdiction on the basis that they had not committed any acts of infringement in the UK and were domiciled in Germany and Switzerland.  Sportradar subsequently issued proceedings against FDC in Germany seeking negative declarations that its activities did not infringe any of FDC’s intellectual property rights.

Floyd J held that Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK.  As regards the acts of re-utilization (in respect of database right) and making available (in respect of copyright), these were acts committed online, which took place only where the transmission took place and not where the transmission was received. Accordingly, Sportradar’s “making available over the internet” took place in Austria and Germany, where its servers were based. The Judge did hold, however, that there was a good arguable case that Sportradar were jointly liable for the acts of infringement of copyright and database right by users in the UK who accessed the data.

Court of Appeal decision – copyright infringement
The Court of Appeal held that neither Sportradar nor its UK users had infringed FDC’s copyright by reproducing or making available their data (i.e. goals scored, red cards, yellow cards, players etc). The Court of Appeal held that although there may be copyright in Football Live, what was alleged to have been copied was, on any reasonable view, mere data. It followed that when the proceedings started, the Court was not seized of a claim in copyright to the necessary standard. The English Court did not therefore have jurisdiction to hear the UK copyright claim or the allegation of authorisation.

Court of Appeal decision - database right infringement
The Court of Appeal did, however, consider that the English Court had jurisdiction to hear the database infringement claim (and consequently the allegations that Sportradar were jointly liable with UK users for database right infringement). FDC had argued that “transmission”, in the context of the provision of data over the internet, involved both the acts of hosting the website and the act of the user in accessing it. Data was not transmitted unless and until it was received. Sportradar, on the other hand, argued that transmission only occurred in the place from which the data emanated. The High Court had preferred Sportradar’s view. However, the Court of Appeal decided that it was not appropriate to form their own view about the question of where the acts of re-utilization and extraction occurred. Accordingly, the Court referred a question to the CJ asking whether where a party uploads data from a database protected by sui generis right onto the party’s web server, which is located in Member State A and in response to requests from a user in Member State B the web server sends such data to the user’s computer, is the act of sending the data an act of “extraction” or “re-utilization” by that party, and does any act of extraction and/or re-utilization occur in A or B or both?


Private use exception: fair compensation for copyright owners during cross-border sales

Stichting de Thuiskopie v Mijndert van der Lee & ots (AG Jääskinen for the CJ; C-462/09; 10.03.11)

The Hoge Raad der Nederlanden (Dutch appeal court) referred questions to the CJ concerning the ‘private use’ exception provided for by Article 5(2)(b) of Directive 2001/29/EC on Copyright in the Information Society.  This exception allows Member States to permit copying of protected works for private, non-commercial use provided that they ensure adequate compensation is paid to the copyright owner. The questions referred asked whether the Berne three step test, embodied in Article 5(5) of the Directive, meant that fair compensation must be paid in at least one Member State during cross border transactions.

The third defendant to the proceedings, Opus, sold blank recording media in Germany via a website, which was available in Dutch. Opus did not pay compensation to any German authority or collecting society for the media sold to Dutch customers. Furthermore, neither Opus nor its customers paid any compensation to the claimant, a Dutch collecting society. Under the contract of sale, Opus had made its customers responsible for shipping from Germany to the Netherlands. This was significant because under the Dutch implementation of Article 5(2)(b) it was either the manufacturer or the importer who was responsible for paying compensation to the copyright holders.

The AG concluded that Articles 5(2)(b) and 5(5) did not impose on the Member States a single solution as to how the payment of fair compensation to the rightholders is ensured in the case where the Member State had taken advantage of the private use exception. These provisions excluded any interpretation of the relevant national legislation that did not ensure effective payment of such fair compensation by a distant seller of media for reproducing such works or other protected subject-matter that targeted customers in that Member State unless the seller had already paid comparable compensation in the Member State where the transaction took place.

In reaching this conclusion, the AG referred to Padawan (C-467/08, reported in the CIPA Journal, November 2010) and noted that Article 5(2)(b) provided Member States with a large margin of appreciation. However, the compensation was not optional but rather one of the aims of Article 5(2)(b). If a Member State chose to impose the obligation of compensation on individuals, it must establish a system to ensure such compensation is actually paid. The AG recognised that it was the individuals who should be liable for paying the compensation and therefore, logically, the most practical solution was to add it to the sales price and collect from the vendor. Such an arrangement did not infringe the principal of free movement of goods.

The AG opined that, since copyright is only partly harmonised, there was no blanket rule that all cross-border selling arrangements would require payment of compensation, particularly since they may target customers in Member States not allowing private copying.  Only in the situation where the vendor was targeting the Member State’s consumers in question should the vendor have to pay compensation. This was both because (i) this was the situation in which the harm was likely to be greatest; and (ii) requiring all distance sellers to pay compensation would threaten to distort competition in the internal market. To determine whether a vendor was targeting a particular Member State’s consumers, the AG referred to the criteria set out by the CJ in Pammer and Hotel Alpelhof (C-585/08).

The AG concluded with two additional points: firstly, if the vendor had already paid compensation in its home Member State (unlike Opus) it would not have to pay twice; secondly, a vendor cannot contract out of its obligations under EU law and, therefore, Opus’ contract designating customers as importers would not provide it with any relief.


Requirement for digital satellite television suppliers to obtain authorisation of copyright holders in certain circumstances

Airfield NV & anr v Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA & anr (AG Jääskinen for the CJ; Joined Cases C-431/09 and C-432/09; 17.03.11) (Decision not yet available in English)

AG Jääskinen has given an opinion on two questions submitted by the Court of Appeal of Brussels to the CJ on the interpretation of Directive 93/83 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission. The questions related to whether the Directive precludes a requirement that a supplier of digital satellite television must obtain the authorisation of copyright holders in specific circumstances.

In the first scenario proposed, a broadcasting organisation transmitted programme carrying signals by a fixed link or by encrypted satellite signals to a supplier of digital satellite television. The suppliers had those signals encrypted and sent to a satellite. In the second scenario proposed, a broadcasting organisation transmitted programme carrying signals to a satellite in accordance with the instructions of a supplier of digital satellite television.  In both cases, with the consent of the broadcasting organisation, the satellite beamed those programme carrying signals back down to the satellite television supplier’s subscribers as part of a package of television programmes. The subscribers were able to view the programmes simultaneously and unaltered by means of a decryption card or smart card provided by the satellite television supplier.

AG Jääskinen concluded that the Directive does not preclude a requirement that a supplier of digital satellite television must obtain the authorisation of copyright holders in those circumstances.


Prevention of exclusive broadcast of certain football matches held to be lawful

Fédération Internationale de Football Association v European Commission and Union des associations européennes de football v European Commission (GC; Cases T-385/07, T-68/08 and T-55/08; 17.02.11) 

The GC dismissed appeals by Fédération Internationale de Football Association and Union des associations européennes de football against decisions by the Commission that measures taken by UK and Belgium to prevent the exclusive broadcast of certain football matches were lawful.

The UK government had designated all matches in the World Cup and European Championship finals as being of major importance to UK society within Article 3(a) of Directive 89/552 (the Broadcasting Directive), such that a UK broadcaster could not obtain exclusive rights to broadcast those matches. The Commission approved this measure, and similar measures taken by the Belgian government in relation to World Cup matches. Fédération Internationale de Football Association and Union des associations européennes de football (the governing bodies), who license the broadcasting rights in respect of World Cup and European Championship matches respectively, challenged the Commission’s decision on grounds that it was contrary to Article 3(a) of Directive 89/552, infringed their right to property, the right to freedom of establishment and their freedom to provide services. In addition, the governing bodies alleged a breach of EU competition law.

The GC upheld the Commission’s decision. All World Cup and European Championship matches may be regarded as of major importance for the public of a given member state, whether or not they were “gala” matches such as the final, semi-final and other matches involving that state. The loss of exclusivity did not destroy the governing bodies’ ability to sell the rights. The restrictions on the rights to freedom of establishment and to provide services were justified by overriding reasons of public interest, achieved in an appropriate and proportionate manner. Further, because the allegedly anti-competitive effects resulted indirectly from those restrictions, there was no breach of EU competition rules. In addition, the UK measures did not grant a special or exclusive right to the free-to-air broadcasters within the meaning of Article 106(1) of the Treaty on the Functioning of the European Union. The GC therefore dismissed the appeals.



The Hedgehog Golf Company Ltd (“HGC”) v Frank Hauser* (Newey J; [2011] EWHC 689 (Ch); 23.03.11)

Newey J granted HGC a perpetual injunction restraining Mr Hauser from disclosing its confidential information. HGC sold a device the subject of a patent consisting of a series of studs attached to the wheels of a golf trolley, which enabled golfers to play in wet conditions. HGC had issued proceedings against Masters Golf Company for patent infringement.

Until recently, Mr Hauser had been a 50% shareholder and director of HGC. The other shareholder and now sole director was Mr Lantsbury. Relations broke down between Mr Hauser and Mr Lantsbury and Mr Lantsbury presented an unfair prejudice petition against Mr Hauser pursuant to Section 994 of the Companies Act 2006, which was granted by Mr Gabriel Moss QC, sitting as a Deputy High Court Judge. In his judgment, Mr Moss referred to Mr Hauser’s attitude of blatant disregard for the truth and for the rights of his fellow director. After seeing the judgment, Mr Hauser made a proposal to Mr Lantsbury and told him that if it was not accepted, he would offer his services to the patent attorneys acting for Masters Golf Company to assist them in their defence of HGC’s claim. Mr Hauser also threatened to make public the fact that HGC’s patent did not cover the manufacture of wheels and suggested that he could therefore contact golf trolley manufacturers to help them manufacture wheels. In cross-examination, Mr Hauser admitted that he was prepared to disclose the full facts that led up to the litigation with Masters and when judgment was handed down, Mr Hauser declined to give any undertaking that he would not approach manufacturers or use any specialist knowledge acquired as a director of HGC in the future.

HGC applied without notice for, and was granted, an interlocutory injunction restraining Mr Hauser from disclosing any confidential information (which was defined as including information relating to the patent, research activities, inventions, secret processes, designs, formulae and product lines) as to the practice, business dealings or affairs of HGC or any of HGC’s customers or clients. At the return hearing, the injunction was continued on similar terms until trial. At trial, Newey J held that it was appropriate to make the injunction perpetual. Mr Hauser had shown a blatant disregard for Mr Lantsbury’s rights, had revealed an intention to destroy or damage HGC and had made a number of threats, including to assist Masters Golf Company. Nevertheless, the Judge held, his provisional view was that the perpetual injunction should be rather narrower than that granted on an interlocutory basis.


Katharine Stephens, Zoe Fuller and Gina Brueton

Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Alice Sculthorpe, Chelsea Roche, Hilary Atherton, Luisa Zukowski, Nick Aries, Nick Boydell, Rachel Fetches, Tim Harris, Toby Bond, Victoria Dearson, Victoria Gardner and Victoria Poyer.

The reported cases marked * can be found at and the CJ’s decision can be found at