This month we report on the AG's opinion on the meaning of 'acquiescence' and 'honest concurrent use' in Budĕjovický Budvar národní podnik v Anheuser-Busch Inc, we look at the seizure of in-transit counterfeit goods in Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd, we look at trade mark infringement through the use of an identical sign in a website click-through ordering procedure in DataCard Corporation v Eagle Technologies Ltd and in Deakin v Card Rax Ltd, we look at the scope of implied licences, bailment and whether unpaid fees for copyright licences constitute a debt or an infringement.

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

Case   GC
Oyster Cosmetics SpA v OHIM; Kadabell GmbH & Co K
Application (and where applicable, earlier mark)  

- cleaning products, soaps, perfumery, essential oils, cosmetics, hair lotions; hair colorants,  dentifrices (3)

- soaps, perfumeries, essential oils, preparations for body and beauty care, hair lotions, dentifrices (3)


The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Art 8(1)(b).  

The GC found that neither the word elements other than ‘Oyster’ and ‘Oystra’ of the respective marks nor the figurative elements would hold the attention of the relevant public due to their small size and lack of distinctiveness. The BoA did not err in concluding that ‘Oyster’ and ‘Oystra’ dominated the overall impression of the respective marks. Furthermore, the BoA did not err in undertaking a visual and phonetic comparison solely on the basis of these elements and finding the marks to be similar. In addition, in so far as the ‘Oystra’ element would remind the relevant English speaking public of ‘Oyster’, the marks were conceptually similar.

Given the identity or similarity of the goods at issue and the similarity of the marks, the BoA was correct to find a likelihood of confusion.


Case   GC
Paroc Oy AB v OHIM
Application (and where applicable, earlier mark)  

- metals (6)
- rubber, gutta-percha, gum, asbestos, mica and goods made from these materials (17)
- building materials (non-metallic) (19)
- building construction, repair, installation services (37)


The GC dismissed the appeal from the BoA’s decision to refuse the mark under Art 7(1)(b).

The GC concluded that the substance of the action was limited to whether the BoA was justified in holding that the mark should be refused in respect of the Class 37 services.

The appeal against the remaining goods was inadmissible, as the applicant had previously applied for the identical mark in respect of these goods and the application had been rejected by the BoA and not appealed. The BoA’s second decision in respect of these goods was therefore merely confirmatory.

The mark would be immediately understood as meaning an insulation activity which is long lasting or which lasted a lifetime. There was no reason for the relevant public to view the mark as an indicator of origin.

The mark was therefore devoid of distinctive character in respect of the Class 37 services.


Lan Airlines SA v OHIM; Air Nostrum, Líneas Aéreas del Mediterráneo SA


Application (and where applicable, earlier mark)

- transport, packaging and storage of goods, travel arrangement (39)
- muscle relaxant medicines containing tolerison, muscle relaxant veterinary preparations containing tolperison (5)


- publicity, business management (35)
- transport of passengers, goods, documents and valuables, storage, warehousing, packing and distribution, information on travel or the transport of goods by intermediaries, courier services (39)
- providing of food and drink, temporary accommodation (43)


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

It was not disputed that the relevant goods were identical.

The GC concurred with the BoA’s conclusion that the element ‘lam’ was not a dominant element in the mark applied for and therefore the element ‘líneas aéreas del mediterráneo’ should also be taken into consideration when comparing the marks in question.

Visually and phonetically the marks were not similar as they differed in the number of words they comprised, their structure, length and sound.

For the section of the relevant public with no knowledge of Spanish there was no conceptual difference or similarity between the relevant marks. The section of the relevant public with even a limited knowledge of Spanish would understand the mark applied for as referring to air transport services in the Mediterranean and would therefore perceive a conceptual difference from the earlier marks, which had no specific meaning.

Despite the identity of the goods in question, the differences between the marks meant there was no likelihood of confusion.


Ineos Healthcare Ltd v OHIM; Teva Pharmaceutical Industries Ltd

Application (and where applicable, earlier mark)

- pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds, pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments, phosphate binders for use in the treatment of hyperphosphataemia (5)

- pharmaceutical preparation for regulating calcium (5)
(Lithuanian and Latvian national marks)


The GC annulled the BoA’s decision to allow the opposition under Art 8(1)(b) in respect of certain of the goods applied for and dismissed the appeal as to the remainder.

The BoA took account of the results of its own internet searches regarding information on the goods in question. By doing so, it infringed Art 74, since the facts revealed by the internet searches were not well known.

The GC noted that such an error could only justify annulling a decision if the error had a decisive effect on the outcome. This was the case for most of the goods applied for, since the BoA could not have reached the conclusion that the relevant goods were similar without referring to the disputed research. Without the use of this information the decision would have been substantially different.

For the remaining goods applied for (pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments) the information in the disputed research merely confirmed the BoA’s conclusion on similarity and therefore did not justify annulling the decision for these goods.


Annco Inc v OHIM; Freche et fils associés


Application (and where applicable, earlier mark)

- leather and imitations of leather, and goods made from these materials (18)
- clothing, footwear (25)
- retail services in the fields of clothing, footwear, small leather and imitation leather accessories (35)

- leather and imitations of leather, goods of leather or imitation leather (18)
- clothing, footwear (25)
(French national mark)


The GC annulled the BoA’s decision that there was a likelihood of confusion between the two marks under Art 8(1)(b).

The GC concurred with the BoA’s finding that there were phonetic and visual similarities between the marks, but, because ‘loft’ was preceded by other elements in the mark applied for, these were not strong.

However, the BoA had based its analysis for conceptual similarity on a false premiss. Rather than being perceived as a meaningless English noun or surname, the average French public would associate the word ‘loft’ with a kind of accommodation.

Furthermore, the GC disagreed that the word ‘loft’ of the mark applied for was the dominant element. In fact, ‘Ann Taylor’ would be more distinctive to the French public, since the word ‘loft’ had a clear, specific meaning.

Although there was a certain conceptual similarity between the marks, the overall similarity was weak and was not sufficient for a finding of a likelihood of confusion, despite the identity of the goods.


J&F Participações SA v OHIM; Plusfood Wrexham Ltd


Application (and where applicable, earlier mark)

- meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats (29)

- meat, fish, poultry and game, none being live, meat extracts, preserved, dried or cooked fruits and vegetables, milk and dairy products for food, edible oils and edible fats (29)
(UK national mark)



The GC dismissed the appeal from the BoA’s decision to reject the application in respect of certain goods and allow the application for the remaining goods under Art 8(1)(b).

The BoA was correct to conclude that proof of genuine use of the earlier mark had been furnished in respect of ‘meat, poultry (except game) none being live, preserved and cooked vegetables’ under Arts 42(2) and (3). The BoA was entitled to rely on invoices from Plusfood addressed to a company within the same group as Plusfood since the invoices appeared authentic and honest. The absence of proof of genuine use of the remaining goods of the earlier word mark was not disputed.

The GC agreed with the BoA’s conclusion that all the goods applied for except ‘eggs, milk and milk products’ and ‘edible oils and fats’ were either identical or similar to the goods covered by the earlier mark. It was not disputed that there was no likelihood of confusion as regards the remaining goods.

Since the signs at issue were highly similar, the BoA was correct to conclude that there was a likelihood of confusion between the marks for the goods considered to be similar or identical. 


Formula One Licensing BV v OHIM; Global Sports Media Ltd

Application (and where applicable, earlier mark)

- magazines, pamphlets, books (16)
- communication of books, magazines and newspapers via computer terminals (38)
- electronic publication of books, journals and periodicals, entertainment information (41)
all in the field of Formula 1 

- goods and services in Classes 16, 38 and 41
(International, German and UK registrations)



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

The GC concluded that OHIM had a duty to verify the way in which the relevant public perceived the ‘F1’ element in the mark applied for. In this case, the ‘F1’ element would be perceived as an element with a descriptive function (an abbreviation of Formula One), rather than a distinctive element. Furthermore, it was necessary to distinguish between the ‘F1’ element as a word and the sign F1 as a logotype. The BoA was correct to find that (i) the reputation of the earlier figurative mark was linked to the logotype itself; and (ii) the ‘F1’ element, in ordinary typeset, had only weak distinctive character.

There was no likelihood of confusion between the mark applied for and the earlier marks.

In respect of the earlier word marks, the lack of confusion was due in part to consumers regarding ‘F1’ in ordinary typeset as an abbreviation of Formula One and thus as a description, and in part to consumers not connecting the ‘F1’ element in the mark applied for with Formula One Licensing. Consumers would have learned to associate the F1 Formula logotype with Formula One Licensing but not the F1 sign in a standard typeset.

There was no confusion with the earlier figurative mark because of a lack of visual similarity and only limited phonetic and conceptual similarities, despite the identity of the goods and services.


P.P.TV v OHIM; Rentrak Corp

Application (and where applicable, earlier mark)

- video cassette distribution services on a revenue sharing or use fee basis, rental of videos and DVDs, rental of video recorders and DVD players, distribution of video tapes, rental of videos, DVDs, video recorders and DVD players on-line via the global computer network

- education, training, entertainment and sporting and cultural activities (41)
(Portuguese national mark)


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

The relevant public consisted of Portuguese business consumers (for ‘video cassette distribution’ and ‘distribution of video tapes’ as such distribution services were intended for the business public) and average Portuguese consumers for the remaining services covered by the marks.

The BoA was correct to conclude (i) that there was a remote similarity between the rental services of the application and the services of the earlier mark as the rental of DVDs, videos and recorders was one way of making the activities listed for the earlier mark available to the public; and (ii) that there was no similarity between the distribution services of the application and the services of the earlier mark as they were intended for different publics and thus could not be regarded as complementary to, nor substitutable for, one another.

In any event, the GC concluded that the signs differed visually, conceptually and phonetically and held that those differences were sufficient to rule out any likelihood of confusion.


Decisions not yet in English


Joined Cases
T-299/09 and

Gühring OHG v OHIM


Application (and where applicable, earlier mark)  

- tools for drilling (7)


The GC upheld the BoA’s decision that the two marks (a combination of (i) orange and grey and (ii) brown and grey) were devoid of distinctive character in relation to the goods applied for under Art 7(1)(b).




Yorma’s AG v OHIM; Norma Lebensmittelfilialbetrieb GmbH & Co. KG


Application (and where applicable, earlier mark)  


- goods and services relating to food and drink, and house rental (29, 30, 32, 33, 35 and 36)

- retail of various foodstuff (35)
- accommodation and restaurants (42)



The GC upheld the BoA’s decision that there was a risk of confusion between the marks under Art 8(1)(b) given the similarity of the goods and services, and the visual and phonetic similarities of the marks.


Meaning of ‘acquiescence’ and ‘honest concurrent use’

Budĕjovický Budvar národní podnik v Anheuser-Busch Inc (AG Trstenjak for the CJ; C-482/09; 03.02.11)

In a case between Budĕjovický Budvar and Anheuser-Busch involving the long disputed BUDWEISER trade mark ([2009] EWCA Civ 1022 reported CIPA Journal, November 2009), the Court of Appeal made references to the CJ on certain matters of interpretation of the Trade Marks Directive 89/104. The questions referred concerned interpretation of the concept of acquiescence in Article 9(1) including when the five year period starts to run, and also interpretation of Article 4(1)(a) and the compatibility of the doctrine of honest concurrent use with EU law.

Budĕjovický Budvar and Anheuser-Busch both distribute beer under a trade mark consisting of or including the word BUDWEISER and have done so in the British market since 1973 and 1974, respectively. Both parties applied to register the word BUDWEISER for ‘beer, ale and porter’; Anheuser-Busch in 1979 (which Budĕjovický Budvar opposed) and Budĕjovický Budvarin 1989 (which Anheuser-Busch opposed). In February 2000, theCourt of Appeal, applying the Trade Marks Act 1938 which allowed simultaneous registration of identical or confusingly similar marks in cases of honest concurrent use, dismissed both oppositions and allowed both sides to register BUDWEISER. Budĕjovický Budvar and Anheuser-Busch were subsequently both entered on the trade marks register as proprietor of the word mark BUDWEISER.  

Four years and 364 days after registration of the BUDWEISER marks, Anheuser-Busch applied to the Trade Marks Registry for a declaration of invalidity of Budĕjovický Budvar’s mark on the basis that Anheuser-Busch’s mark was the earlier mark; the marks and the goods were identical so Budĕjovický Budvar’s mark was liable to be declared invalid by virtue of Article 4(1)(a); and there was no acquiescence because the five year period provided for in Article 9 was not over. The Trade Marks Registry allowed the application and this decision was upheld on appeal by Budĕjovický Budvar to the High Court. Budĕjovický Budvar appealed to the Court of Appeal which stayed the proceedings pending answers to the questions referred for a preliminary ruling.

Acquiescence within the meaning of Article 9
Article 9(1) limits the enforcement of a trade mark proprietor’s right to seek a declaration of invalidity of a later registered trade mark under Article 4(1)(a) where he has acquiesced for a period of five successive years in the use of this later trade mark while being aware of such use.

The AG concluded that the concept of acquiescence within the meaning of Article 9(1) was a concept of EU law which must be given an autonomous and uniform interpretation. For a person to acquiesce they had to be aware of the situation but decline to take countermeasures. In circumstances where it was legally or factually impossible to take countermeasures, a person could not be described as acquiescing. On the form of the rule under Article 9(1), the AG concluded that for the five year period of acquiescence to start to run, the following three conditions must be satisfied: (i) the later mark must be registered; (ii) the later mark must be used in the Member State in which it is registered; and (iii) the proprietor of the earlier mark must be aware of the registration and use of the later mark. The date of registration of the later mark is determined in accordance with the procedural rules of the Member State. Further, the AG considered that it was not necessary for the earlier trade mark to be registered for the period of acquiescence to start to run. The distinction between an earlier and later mark depends on the dates on which registration was applied for and not the dates of actual registration. The earliest date, therefore, at which time can start running, is the date of registration of the later mark, if the later mark is used from that date and the proprietor of the earlier mark becomes aware of the use at that time. On the matter of knowledge, the AG commented that there was a statutory presumption that from the date of registration of the later mark the proprietor of the earlier mark has the appropriate knowledge. This presumption can however be rebutted if the proprietor of the earlier mark can show that he acquired knowledge at some other time. When interpreting Article 9(1) it is actual knowledge that matters. The AG commented that there was no need to take the analysis further as it could be safely assumed that Anheuser-Busch knew of the registration of the mark BUDWEISER by Budĕjovický Budvar and its use.

Honest concurrent use
The AG next considered whether Article 4(1)(a) precluded recourse to the doctrine of ‘honest concurrent use’ which has long been recognised in English trade mark law.

The AG concluded that it did. The AG considered that this doctrine would have to be an exception to the principle of priority laid down in Article 4(1)(a). However, she found no exception in the Directive which would serve as a legal basis for this nor did she consider that the Directive permitted such an exception to be implemented on a national basis since it would affect the enforcement of the rights conferred by a trade mark which are the subject of harmonisation. The AG therefore concluded that the doctrine of honest concurrent use was incompatible with EU law. 

Temporal application of Article 4(1)(a)
The Court of Appeal did not specifically ask whether Anheuser-Busch, in the circumstances, could rely on Article 4(1)(a) to claim a declaration of invalidity of Budĕjovický Budvar’s BUDWEISER trade mark. However, the AG considered that the question of the temporal validity of Article 4(1)(a) arose and required clarification given the conclusion that the doctrine of honest concurrent use was incompatible with the Directive.

The AG concluded that Article 4(1)(a) was temporally not applicable to the invalidity proceedings. The principles of legal certainty and the protection of legitimate expectations required exceptionally permitting the coexistence of the two identical marks and thereby leaving untouched the Court of Appeal’s decision of February 2000 and its legal effects. The AG noted that the current situation of the parties was due to the legal position in the UK before the entry into force of the Directive which permitted the coexistence of identical marks. Despite the identity of the marks and sectors of the market in which the parties operated, they had both built up goodwill and acquired market shares which would be lost by Budĕjovický Budvar if Article 4(1)(a) was imposed and Budĕjovický Budvar’s mark declared invalid. The application of Article 4(1)(a) in this instance would also have the result of extending the Directive’s temporal scope back to 1979 which the legislature could not have intended.

Abuse of rights
Finally, the AG considered whether Anheuser-Busch had abused its right under Article 4(1)(a) by applying for a declaration of invalidity only one day before the five year period of acquiescence expired. The AG concluded that Anheuser-Busch had not. Anheuser-Busch was entitled to make full use of the period specified in Article 9(1) and was free to apply the rules in a manner most to its advantage. Further, the fixed time limit of five years promotes legal certainty. To prevent Anheuser-Busch from asserting its right one day before expiry of the five year period of acquiescence would be detrimental to this principle and therefore could not have been within the intention of the legislature.

Following on from these considerations, the AG concluded that it was not necessary for the CJ to answer the individual questions referred. She proposed that the CJ’s answer to the reference be that Article 4(1)(a) is temporally not applicable to a situation such as the current one between Anheuser-Busch and Budĕjovický Budvar and that, consequently, such a case must be decided in accordance with national law.



Hasbro Inc & Ots v 123 Nahrmittel GmbH & Anr* (Floyd J; [2011] EWHC 199 (Ch); 11.02.11)

Hasbro succeeded in its claims for trade mark infringement and passing off. Nahrmittel’s counterclaims for declarations of invalidity and revocation were dismissed.

Hasbro made and sold a children’s modelling composition under the trade mark PLAY-DOH. Nahrmittel manufactured and sold a powdered dough mix called Yummy Dough, which was marketed with the strap line THE EDIBLE PLAY DOUGH. The words PLAY DOUGH MIX and COLOURED EDIBLE PLAY DOUGH MIX also featured on the Yummy Dough packaging. Hasbro brought proceedings for trade mark infringement and passing off. Nahrmittel counterclaimed for a declaration that the marks were invalid on the basis that they lacked distinctiveness or were descriptive and sought revocation of the marks on the basis that PLAY DOUGH was the common name in trade for modelling compounds in consequence of acts and/or inactivity on the part of Hasbro.

Validity: distinctive character
It was not in dispute that the PLAY-DOH marks had strong elements which referred to the kind of goods for which they were registered: ‘PLAY’ in the context of toys was wholly descriptive of what was done with them whilst ‘DOH’ was the phonetic equivalent of dough, which was a reference to the dough-like nature of the product. Those elements were at their strongest when the marks were heard rather than seen. Accordingly, the Judge held, the mark had an inherently low capacity to distinguish the goods of one undertaking from those of another. Conversely, the other factors in the global assessment such as market share, intensity of use and investment in promotion were all at the extreme upper end of what a trade mark proprietor might ever hope to show and this was not a case in which such factors were nevertheless outweighed by the inherent inability of the mark to distinguish. The inescapable conclusion was that a large proportion of the relevant public would take the PLAY-DOH mark used in context in relation to the goods for which it was registered as a mark of origin.

Floyd J rejected Nahrmittel’s attempt to run a validity/infringement squeeze (by inviting the court to carry forward any findings about the significance of the spelling of PLAY-DOH / PLAY DOUGH into its conclusions on infringement) on the basis that squeezes of this kind did not work in trade mark cases.  In contrast to patent cases where squeeze arguments relied on the fact that the claim had only one meaning such that if an article fell within the claim as an infringement, it would also fall within the claim for the purposes of an attack on validity, the precise basis on which a mark was originally admitted to the Register did not restrict the scope of protection for the purposes of infringement particularly as a mark may grow in strength by reason of acquired distinctiveness.

The evidence did not establish that PLAY-DOH had become the common name in trade, far less that it had become so through inactivity on the part of Hasbro. Accordingly, the counterclaim for revocation failed.

Trade mark infringement
Floyd J held that the signs used by Nahrmittel were THE EDIBLE PLAY DOUGH, COLOURFUL EDIBLE PLAY DOUGH and PLAY DOUGH MIX. Given the context, it was not fair to excise just the word PLAY DOUGH.  In any case, PLAY DOUGH was not identical to PLAY-DOH. The incorrect spelling of ‘dough’ was part of what gave the mark visual distinctiveness and would not go unnoticed by the average consumer. The marks were therefore not infringed under Article 5(1)(a).

There was a preliminary question as to whether Nahrmittel’s use of the strap line THE EDIBLE PLAY DOUGH was use as a trade mark. However, the Judge held that the strap line was used on the packaging of the product and had been woven into the naming of their product and average consumers would therefore understand the strap line to be both part of the name of the product and as having origin connotations. The strap line was therefore being used in a trade mark sense.

The Judge held that there was strong conceptual similarity between PLAY-DOH and THE EDIBLE PLAY DOUGH, phonetically, the marks were identical and there was some visual similarity. As the PLAY-DOH marks had achieved the status of household names, it was wrong to think of the relevant distinctiveness of the mark as being wrapped up in the three letters ‘DOH’ or in the absence of the letters ‘UG’, so that this became the dominant element. Notwithstanding that there would be a class of consumers who would be triggered into recollections of home-made play doughs upon seeing the strap line and who would understand the words to be used in a purely descriptive sense, the Judge held that there must be a significant class of consumers who would be triggered into recollections of the PLAY-DOH mark. A mark which had been used for as long and on as broad a scale as PLAY-DOH was capable of having that extended reach. Furthermore, confusion was also made more likely by the way in which the phrases had been woven together with Yummy Dough as a brand name extension and also by the use of the definite article, ‘the’ in the strap line since some consumers would understand Yummy Dough as being the edible version of PLAY-DOH. Infringement was therefore established under Article 5(1)(b).

As regards infringement under Article 5(2), Floyd J held that the PLAY-DOH marks plainly enjoyed the necessary reputation, there was a link between the marks and the sign in the minds of the relevant public and there was unfair advantage since misrepresenting the origin of goods was taking unfair advantage of the goodwill attached to the marks. Likewise, bringing the mark to mind in a way which fell short of actual confusion also amounted to taking advantage of the goodwill attached to the marks. Equally, there was detriment to the distinctive character of the marks since it was for Hasbro to decide on the type of goods associated with their goodwill and they had chosen not to promote the eating of PLAY-DOH.

Floyd J also found that the COLOURFUL EDIBLE PLAY DOUGH MIX and PLAY DOUGH MIX signs were objectionable under Articles 5(1)(b) and 5(2) since a consumer who took the strap line to mean that the product was of common origin with PLAY-DOH would be confirmed in that view by these additional indications. 

Floyd J held that Nahrmittel had not acted fairly in relation to Hasbro’s rights as a trade mark owner and was thus unable to avail itself of the defence under Article 6 on the basis that the use of the sign was an indication of the kind of goods Nahrmittel sold. In reaching this conclusion, the Judge took into account that Nahrmittel was aware: of the PLAY-DOH registered marks; that the use of the words PLAY DOUGH would lead at least some consumers to think that the product was a Hasbro product; and that Hasbro objected to their use of the words PLAY DOUGH, yet Nahrmittel took no legal advice in the UK. Furthermore, Floyd J held, the use of the strap line took unfair advantage of the repute of the PLAY-DOH marks and would allow Nahrmittel to profit from that; thus Article 6 was not available.

Passing Off
Despite the absence of real-life confusion, Floyd J nevertheless held that passing off had been established. Although consumers were familiar with the various additional features of the Hasbro brand, their absence on the Yummy Dough packaging was not enough to avoid confusion amongst a significant proportion of consumers.


Trade marks infringed by a misleading comparative advertising campaign

Kingspan Group PLC & Anr v Rockwool Ltd* (Kitchin J; [2011] EWHC 250 (Ch); 21.02.11)

Kitchin J held that Rockwool had infringed Kingspan’s KINGSPAN and KOOLTHERM UK and Community trade marks under Articles 5(1)(a) and 5(2) of the Directive and Articles 9(1)(a) and 9(1)(c) of the Regulation by its use of the marks in its promotional campaign. Kingspan’s claim for malicious falsehood, however, failed.

Both parties operated in the construction industry manufacturing and selling, amongst other things, synthetic insulating wall and roof panels. Kingspan’s panels were constructed from plastic foam whereas Rockwool’s panels were constructed from a mineral wool which was incombustible.  Rockwool’s promotional campaign intended to highlight the superior fire-retardant properties of its panels as compared with its competitors, including Kingspan.  In order to demonstrate its products’ fire resistance, Rockwool arranged for various wall and roof panels to be tested under laboratory conditions according to an international standard, ISO 9705.  These tests were filmed and made into different versions of a promotional video.  Rockwool then launched a promotional road show where the video was played and the fire resistance of the same panels was demonstrated live in a manner that did not accord with ISO 9705 or any other accepted standard.

Kingspan complained that the effect of Rockwool’s campaign was to suggest that the Kingspan products were a fire hazard and therefore unsafe.  The testing did not represent how Kingspan’s products were used in practice and was misleading. Kingspan issued proceedings for trade mark infringement under Articles 5(1)(a) and 5(2) of the Directive and Articles 9(1)(a) and 9(1)(c) of the Regulation in relation to Rockwool’s use of its KINGSPAN and KOOLTHERM marks (which the parties accepted had a reputation) in commentary during the road shows and in the commentary of some versions of the promotional videos.  Rockwool contended that its use of the marks did not infringe because it constituted legitimate comparative advertising within the scope of the Misleading and Comparative Advertising Directive (2006/114/EC).

Kitchin J held that Kingspan’s trade marks were infringed.  Some of the road shows and some versions of the video failed to compare material, relevant and verifiable features of the parties’ products.  In particular, ISO 9705 was not a widely used standard and the tests used on the road show were far removed from the way in which the parties’ products were installed and would encounter fires in reality.  Kitchin J further held that Rockwool’s intention had been to show the difference between its products and Kingspan’s for the purpose of increasing Rockwool’s market share.  As a result, the relevant videos and road shows had, without due cause, taken unfair advantage of and caused detriment to the reputation of the marks by discrediting and denigrating the products to which the marks related.

Kingspan’s claim for malicious falsehood, however, failed.  Kitchin J rejected Kingspan’s argument that Rockwool believed the videos and road shows to be misleading or were indifferent to that fact.  Rather, Rockwool took steps to ensure the videos were produced by a reputable laboratory and informed Kingspan prior to distributing the videos.  Rockwool had not therefore acted with an improper motive and accordingly, the requisite malice was not made out.


Trade marks infringed by the use of an identical sign in a website click-through ordering procedure
DataCard Corporation v Eagle Technologies Ltd* (Arnold J; [2011] EWHC 244 (Pat); 14.02.11)

DataCard’s claim for trade mark infringement under Article 5(1)(b) succeeded in relation to some but not all of Eagle’s uses of an identical sign on its website, in emails and on packaging labels. This report only deals with the trade mark aspects of the case.

DataCard was a large supplier of card printers and related products and services, which it marketed under a number of trade marks including the word mark, DATACARD, which was registered in the UK for parts for manual and electric imprinters all included in Class 7 and slip printers, roll printers, continuous feed printers and parts therefore all included in Class 9. Eagle was a small company which sold card printers manufactured by a number of manufacturers including DataCard, as well as printer ribbons and other related products under the trade mark PLUS-RIBBON. Eagle marketed the printers, ribbons and other products primarily though resellers who purchased products to sell on to end-users. DataCard alleged that Eagle had infringed its trade marks by using the sign Datacard on its website (where certain products were described as ‘DATACARD PLUS-RIBBONTM and the DataCard logo was used in the click-through ordering procedure), in emails to customers (where products were described as ‘Data card Plus-RibbonTM) and on packaging labels containing the words ‘Datacard card printers’ or ‘Brand: Datacard’.

Arnold J held that the sign used in the click-through procedure and on the labels was ‘Datacard’ or ‘Data Card’. The description of the ribbons on the website and in the email as ‘DATACARD PLUS-RIBBON’ constituted use of two signs: ‘DATACARD’/’Datacard’ and ‘PLUS-RIBBON’/’Plus-Ribbon’. There was no dispute that ‘DATACARD’, ‘Datacard’ and ‘Data Card’ were all essentially the same sign and were identical to the marks. There was however a dispute as to whether Eagle’s use of the sign in the click-through procedure was ‘in relation to’ goods, Eagle having submitted that it was merely an aid to navigation of the kind commonly used on websites. Nevertheless, Arnold J held, this did not necessarily mean that there was no use of the sign in relation to the goods in question. Applying the Advocate General’s opinion in L’Oreal v eBay (C-324/09, reported in the CIPA Journal, January 2011), Arnold J held that this was not a case where Eagle was simply storing and displaying listings uploaded by users and providing search and display functions for those listings. Rather, Eagle was using its website to advertise both DataCard’s products and its own competitive products. It therefore followed that Eagle’s use of the Datacard sign in the click-through procedure was in relation to both DataCard’s products and its own. However, Arnold J held that the goods in relation to which the signs were used were not identical to the goods for which the marks were registered; rather they were complementary to printers and very similar to parts for printers. In reaching this conclusion, the Judge followed the reasoning in the International Trademark Classification: A Guide to the Nice Agreement, which suggested that Eagle’s products were proper to either Class 16 or Class 2, but not to Class 7 or 9: their purpose was to be a carrier for the inks used by the card printers in printing; they were not parts for printers. Nor could the goods properly be classified in two different classes pursuant to paragraph (b) of the General Remarks in the Nice Classification since the goods were not multipurpose composite objects. DataCard’s claim for infringement under Article 5(1)(a) therefore failed.

In relation to the claim under Article 5(1)(b), the Judge held that each of the uses complained of gave rise to a likelihood of confusion on the part of end-user average consumers given that the trade marks were highly distinctive, the signs were identical and the goods were very similar. This was most clearly the case in respect of the labels, which would have lead consumers to believe that the products emanated from DataCard, there being nothing to indicate otherwise. Even if consumers were not confused at the time of purchase, and such confusion only arose after purchase, post-sale confusion could be relied on under Article 5(1)(b), there being support for this proposition in recent case law of the Court of Justice. In relation to the uses on the website and in email, average end-user consumers would be confused by the description ‘DATACARD PLUS-RIBBON’ into thinking that Plus-Ribbon was a subsidiary brand of DataCard’s or that there was some other trade connection between the Plus-Ribbon products and DataCard. The absence of actual confusion did not preclude this finding. Accordingly, DataCard’s claim under Article 5(1)(b) succeeded subject to Eagle’s Article 6(1)(c) defence.

DataCard also pleaded an alternative case of infringement under Article 5(2) which was based on the assumption that there was no likelihood of confusion. DataCard contended that there was unfair advantage or detriment to the reputation of the marks because Eagle had represented that its Plus-Ribbon products were of as good a quality as DataCard’s ribbons when in fact this was not the case. The Judge held that these considerations were not relevant to Article 5(2) and thus the Article 5(2) case was not made out.

As to whether Eagle had a defence under Article 6(1)(c), the Judge held that although it was necessary for Eagle to use signs identical to the marks to indicate the intended purpose of its ribbons, namely that they were compatible with DataCard’s printers, Eagle’s use was not in accordance with honest practices in industrial and commercial matters because the manner of the use gave the impression that there was a commercial connection between the supplier of the Plus-Ribbon products (Eagle) and DataCard. However, since the evidence did not establish that Eagle’s Plus-Ribbons were of inferior quality to DataCard’s ribbons, Eagle had not made false representations as to the quality of the goods in question and had thus acted in accordance with honest practices in that regard.

At a later date, Eagle changed the description of the ribbons on the website to ‘Plus-RibbonTM compatible with Data Card’. For the purposes of infringement under Article 5(1)(a), Arnold J held that the manner in which the sign was used was such as to enable average consumers only with difficulty to ascertain whether the products in question originated from DataCard or a third party. Thus the use of the sign was liable to affect the origin function of the marks. Had the goods been identical, the claim under Article 5(1)(a) would therefore have succeeded. For the purposes of infringement under Article 5(1)(b), however, the Judge concluded that DataCard had not established that the sign was used in such a way so as to give rise to a likelihood of confusion on the part of the average consumer. As DataCard accepted, the description was not confusing in itself and the other relevant factors would not cause the average consumer to misinterpret that description. The Judge explained that he had reached different conclusions in relation to Article 5(1)(a) and Article 5(1)(b) because recent Court of Justice jurisprudence suggested that different tests were applicable to the different Articles. The test for Article 5(1)(a) was whether there was an effect on the origin function of the marks whereas the test for Article 5(1)(b) was whether there was a likelihood of confusion.

At a further later date, Eagle made additional changes to the website including changing the description of the Eagle products to ‘Plus-RibbonTM COMPATIBLE with DATACARD’. The Judge held that these changes were just enough to enable average consumers to ascertain that the products did not emanate from DataCard without difficulty. Eagle also changed its labels to read ‘GENUINE PLUS-RIBBON’ and ‘Compatible with Datacard Card Printers’. The Judge considered that the use of the sign ‘Datacard’ on the new labels was not liable to affect the origin function of marks. Accordingly, the claim under Article 5(1)(a) failed because the use of the signs complained of was not liable to affect any of the functions of the marks.


Damages for trade mark infringement

National Guild of Removers & Storers Ltd v Jones & Anr (t/a ATR Removals) and v Mabberley (t/a Abbeymove and Clear & Store)* (Judge Birss; [2011] EWPCC 004; 09.02.11)

This was an inquiry as to damages for trade mark infringement similar to National Guild of Removers & Storers Ltd v Silveria (t/a C S Movers) ([2010] EWPCC 15, reported in the CIPA Journal, January 2011) in which Judge Birss had held that damages were available on a ‘user’ basis for trade mark infringement. In the present cases, the Judge was referred to authorities which he had not considered in Silveria including the dicta of Jacob LJ in Reed Executive Plc v Reed Business Information Ltd ([2004] RPC 40, reported in the CIPA Journal, March 2004).  In Reed, Jacob LJ drew a distinction between ‘ordinary’ cases in which the mark simply protected goodwill (e.g. where the mark was used solely by one business to distinguish its goods or services) and cases in which the mark was available for hire. Jacob LJ was of the opinion that user damages ought not to be available in ‘ordinary’ cases since the mark was never available to third parties to use for a fee and thus for damages to be awarded on the user principle was close to saying that there was no damage so some would be invented. Judge Birss had gone further than this in Silveria and said that damages were available on a user basis in all cases of trade mark infringement. In light of Reed, however, Judge Birss considered that he should not perhaps have gone that far. Nevertheless, as the present cases (and Silveria) were cases in which the mark was one which was available for hire, damages would be assessed on the basis of the user principle.  This the Judge then did starting from the same damages sum awarded in Silveria, but modifying it for the circumstances of this case.



Seizure of counterfeit goods in transit in a Member State between one non-Community country to another

Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd & Ots; Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs (AG Cruz Villalón for the CJ; Joined Cases C 446/09 and C 495/09; 03.02.11)

Both cases involved alleged counterfeit or pirated goods which were in ‘external transit’ under the Community Customs Code. External transit allows the movement of goods from one point to another within the EU without them being subject to import duties, other charges or other commercial measures (so-called non-Community goods).

Belgian customs authorities detained a consignment of shavers on suspicion that they infringed Philips’ international design registrations and copyright. The goods had originated in Shanghai, China and the Belgian customs authorities informed Philips that a number of China/Hong Kong-based companies were involved in the manufacture of or trade in the detained goods. The forwarding agent of the goods in Belgium, acting on the instructions of the declarant or consignee of the goods, had declared the goods without stating the country of destination.

Philips subsequently brought an action before the Court of First Instance, Antwerp, seeking a ruling that its intellectual property rights had been infringed and claiming that, in accordance with Article 6(2)(b) of Regulation 3295/94 (the ‘old’ Customs Regulation), the Court should use as its starting point the fiction that the shavers seized had been manufactured in Belgium (the so-called ‘production fiction’) and should then apply Belgian law in order to rule on the question of infringement.

The Court referred to the CJ the question of whether Article 6(2)(b) implies that it is open to national courts to disregard the temporary storage/in transit status of such goods and whether national courts must apply the production fiction.

The AG noted that the most important consequence of the production fiction is the possibility of a national court holding that non-Community goods in transit have infringed an intellectual property right in the same way as if they were goods which had been unlawfully manufactured in the Member State, regardless of whether or not those goods were destined for the EU market. His opinion was as follows:

  • Article 6(2)(b) does not mean that national courts may disregard the temporary storage/in transit status of goods, nor does it imply that national courts may apply the production fiction.

  • The production fiction cannot be inferred from the wording of Article 6(2)(b), rather this provision lays down a rule of conflict of laws making it possible to establish which substantive rule the competent authority must apply order to rule on the merits of the case and therefore to assess whether or not there is an infringement of intellectual property rights.

  • The interpretation proposed by Philips went beyond the objectives pursued by the old Customs Regulation. It was not possible to argue that the production fiction does not alter substantive law in this regard, and such an alteration would constitute an impediment to the freedom of legitimate trade and would unacceptably extend the usual content of intellectual property rights.

  • Reliance on the production fiction would make it possible to disregard the condition of ‘use in the course of trade’, which is necessary to establish infringement of a Community trade mark, national mark or design right under harmonised EU law. The Advocate General admitted that there was potentially inconsistent case law on this point but considered that the requirement that ‘use in the course of trade’ be shown, more accurately reflects the CJ’s most recent case law (Class International C-405/03, reported CIPA Journal, August 2009 and Montex C-281/05, reported CIPA Journal, August 2009).

UK Customs at Heathrow Airport stopped and inspected a consignment of fake Nokia goods (bearing the Nokia trade marks) which were in transit through the UK on route from Hong Kong to Columbia. Upon being notified of the detention, Nokia confirmed to Customs that the consignment was counterfeit and requested that Customs seize the consignment pursuant to its powers under Regulation 1323/2003 (the ‘new’ Customs Regulation).

Whilst accepting that the goods in the consignment were fake, UK Customs refused such a request stating that, having taken legal advice, they no longer considered the goods to be ‘counterfeit’ within the meaning of the new Customs Regulation unless there was evidence that the goods might be diverted onto the EU market.

Nokia commenced legal proceedings against Customs. At first instance the Judge held that the goods in question could not be considered to be counterfeit within the meaning of the new Customs Regulation (reported CIPA Journal, August 2009). Nokia subsequently appealed to the CoA, which referred a question to the CJ regarding whether non-Community goods bearing a CTM which are subject to customs supervision in a Member State and in transit from a non-Member State to another non-Member State are capable of constituting ‘counterfeit goods’ within the meaning of Article 2(1)(a) of the new Customs Regulation if there is no evidence to suggest that those goods will be put on the market in the EC.

The AG’s opinion was as follows: 

  • Non-Community goods bearing a CTM which are in transit from one non-EU country to another non-EU country may be seized by customs authorities provided that there are sufficient grounds for suspecting (i) that they are counterfeit goods; and (ii) that they are to be put on the market in the EU, either in conformity with a customs procedure or by means of an illicit diversion. 

  • ‘Suspicion’ in this context is inherently dependent on the particular facts. With regard to (i), ‘suspicion’ must not be taken to mean irrefutable findings, but customs authorities must at the very least have ‘the beginnings of proof’, that is to say, some evidence, that the goods may infringe an intellectual property right. With regard to (ii), particular account must be taken of the danger of fraudulent entry of goods into the EU. In assessing the level of danger, circumstances such as the excessive duration of the transit, the kind and number of means of transport used, and the ease with which it is possible to establish the identities and locations of the consignor and consignee, could lead customs authorities to a well-founded conclusion that apparently counterfeit goods are to be placed on the market in the EU.



Sue Deakin & Anr v Card Rax Ltd & Anr* (Judge Fysh; [2011] EWPCC 3; 07.02.11)

Ms Deakin was the creator and licensor of greeting card designs and other artwork which had been commissioned by Ms Davies, the Third Defendant (who controlled the First, Second and Fourth company Defendants).  The relationship between licensor and licensee broke down (designs were produced late and payments not made). A series of factually complex cross-allegations ensued, involving breach of contract, copyright infringement and bailment.  Claims of joint tortfeasance were also made against a Fifth Defendant, Ms Brock (an investor and director in Ms Davies’ companies).  The 86 page judgment dealt with approximately 65 issues of fact and law. The following points may be of general interest:

Express and Implied Terms in the licence agreements
No formal written contracts were drawn up.  The written terms of the parties’ dealings were contained only in invoices, all remaining terms were oral, and as a result numerous implied terms were invoked by both sides.  Judge Fysh had to consider all three forms of implied terms and set out a useful summary of the law in this area:

  • terms implied in fact - based on the presumed intention of the parties assessed by reference to the ‘officious bystander’ test or the ‘business efficacy’ or ‘necessity’ test.  A party seeking to imply the term must show the contract would have made no sense without it and that the term was omitted because it was so obvious that there was no need to make it explicit;

  • terms implied in law - certain obligations are presumptively determined by law and some may be the outcome of implied terms, for example commissioned works which attract copyright protection, where the implied licence extends no further than the minimum necessary to give business efficacy to the contract;  and

  • terms implied by custom or trade usage - in the context of possible copyright infringement such terms must in the words of Copinger be ‘invariable, certain and general, as opposed to mere common practice’. 

The Judge made the following findings:

The right of a licensee to make alterations to copyright works
The use of the word ‘only’ on invoices meant there was an express term that card designs might only be used for cards, and wrapping paper designs only used for wrapping papers and tags (no change of format).  The Judge also had to decide whether there was an implied term which permitted modification by the licensee of the wrapping paper designs.  He considered there was a ‘spectrum of alteration for commercial purpose’.  Referring to the case of Frisby v BBC ([1967] Ch 932, (which had held that the omission of one line in a play was in breach of an implied term requiring publication in unaltered form) he felt this concerned ‘loftier subject matter’ than artwork for wrapping designs.  As a result he did not consider that any implied term was needed to govern the modification of wrapping paper.  Therefore, in the absence of express or implied terms (as here), he held the licensee may make alterations, even substantial ones, to the licensed artwork.  It was noted in this context that Ms Deakin had not asserted her moral right to object to derogatory treatment of her work under the CDPA 1988 as a result of modification to her artwork by Card Rax.

If a licensee loses original artwork, this does not amount to a breach of the duty of care of a bailee, provided that the licensee has exercised reasonable care to keep the licensed artwork safe while it was in his possession.  The standard of care depends on the circumstances of each particular case: the bailee is not under an absolute duty of care.  What is reasonable depends on the nature and value of the goods and the size of the bailee’s undertaking.  Given that the original artwork in this case, once used, was of no (or little) intrinsic value to anyone, and that the bailee was a small card manufacturer, reasonable care had been taken of the original artwork.

Unpaid fees for copyright licences: a debt or an infringement?
Ms Deakin purported to terminate the licences on the ground of repudiatory breach for failure to pay for the designs, and sued in the alternative for damages for breach of contract and damages for infringement of copyright.  There was no relevant English authority on the propriety of terminating copyright licences for failure to pay.  Following the Australian authorities of Ng v Clyde Securities ([1976] 1 NSWLR 443) and Concrete Pty v Parramatta ([2006] HCA 55), in the absence of express terms, the licensor was not entitled to terminate a licence for non-payment, if the licence was granted in return for a promise to pay.  The Judge followed the finding in Ng that it was not reasonable to imply a term that the licence once granted and acted upon might be revoked in the event of subsequent non-payment.  Unpaid fees for copyright licences did not therefore give rise to an action for copyright infringement, but to an action in debt.

Sale of stock from licensee to successor company
The sale of the licensed artwork by the licensee to a successor company (Card Rax II), amounted to an act of issuing to the public under Section 18 of the CPDA 1988. As a consequence, further sales by Card Rax II of the licensed artwork did not infringe copyright.  Card Rax I at the head of the distribution chain had the right to sell copies of the work to any of its distributors.  Downstream sales were of no concern to the licensor whose rights were now exhausted.  Card Rax I had been dissolved for reasons the Judge accepted were not connected with the present dispute.  Card Rax II, although set up to continue the business of Card Rax I, was in no different position than any other distributor.  The Judge noted that it might have been different if the sale had been fraudulent or a sham, but noted the sale was from one company to another with no common control, and with different shareholders and shareholdings.

Commission of logo 
The Judge held that a logo designed by Ms Deakin for the Bees Knees business was in a different category from the other artwork as its function was different.  In deciding whether there was an implied term that the commissioner owned the copyright in the work or merely a licence, he noted that such implied term should extend no more than the minimum necessary to give the contract business efficacy.  The Judge then referred to Lightman J’s guidelines in Robin Ray v Classic FM ([1998] FSR 662) as to the circumstances when the necessity for an assignment of copyright may be established, specifically cases where, in addition to the right to use the copyright works, the commissioner needs the right to exclude the other party from using the works and the ability to enforce the copyright against third parties.  In Griggs v Evans ([2003] EWHC 2914), concerning ownership of the logo for Doc Martens shoes, it was held that a logo was a paradigm case falling within the above principle.  Judge Fysh held that the logo had been created for the use of Bees Knees alone and that it must have been obvious to Ms Deakin when she took on the commission that the logo was intended to become the focus of the business and through use to become the harbinger and location of Bees Knees’ goodwill.  In the circumstances therefore he implied a term into the agreement for the creation of the logo that Ms Deakin was owner of copyright in the logo but, upon payment of the agreed fee, she would if required and at her expense do what was necessary to assign that copyright to Bees Knees.  

Joint tortfeasance
Judge Fysh also considered the case law on joint tortfeasance in relation to authorisation, procurement and common design.  He summarised the case law in relation to common design and concluded that for this to arise not only does there have to be an agreement between the parties concerned to do a particular act but also the secondary tortfeasor has to have participated in a specific tortious act in furtherance of that agreement.  After considering the myriad allegations of infringement against each of the Davies’ defendants the Judge concluded Ms Brock was never a joint tortfeasor with any of them.


Access to foreign satellite transmissions of football matches

Football Association Premier League Ltd and Ots v QC Leisure and Ots; Karen Murphy v Media Protection Services Ltd (AG Kokott for the CJ; Joined Cases C-403/08 and C-429/08; 03.02.11)

The AG has given her opinion in references made to the CJ by the High Court in two cases involving use of foreign decoder cards in the UK to access encrypted foreign satellite transmissions of Premier League football matches.

The AG concluded that exclusive territorial licences for the broadcast of Premier League football matches were incompatible with EU law. In particular, the AG concluded the following:

  • A work is not communicated to the public by wire or wireless means within the meaning of Article 3(1) of Directive 2001/29 on copyright in the information society, where it is received or viewed as part of a satellite broadcast at commercial premises or shown at those premises, free of charge, via a single television screen and speakers to members of the public present at those premises.

  • The freedom to provide services under the Treaty on the Functioning of the European Union (TFEU) would be impaired if rights-holders to satellite broadcasts could prohibit third parties not contractually linked to them from watching and showing broadcasts in Member States other than those intended. The impairment was particularly intensive in this instance as the rights in question had the effect of partitioning the internal market into quite separate national markets.

  • Article 56 TFEU precludes provisions prohibiting the use of conditional access devices for encrypted satellite broadcasts in a Member State, on the grounds of protection of intellectual property, where such devices are placed on the market in another Member State with the consent of the holder of the rights to the broadcast. The AG did, however, consider that the freedom to provide services did not preclude national rules allowing the holder of rights to a broadcast to object to its communication in a pub, provided that the restriction of this freedom, stemming from the exercise of that right, was not disproportionate to the share of the protected rights to the broadcast.

  • Where a programme content provider enters into a series of exclusive licences each for the territory of one or more Member States under which the broadcaster is licensed to broadcast the programme content only within that territory and a contractual obligation is included in each licence requiring the broadcaster to prevent its satellite decoder cards which enable reception of the licensed programme content from being used outside the licensed territory, such licence agreements are liable to prevent, restrict or distort competition and are therefore incompatible with Article 101(1) TFEU. It was not necessary to show that such effects had actually occurred. 


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