AG Sharpston delivered his opinion that the territorial extent of use of a CTM that was required for it to be considered genuine use within the meaning of Article 15(1) of Regulation (EC) No 207/2009 (the “Regulation”), depended on the impact of that use in the internal market, specifically whether it was sufficient to maintain or create market share in that market for the goods and services covered and whether it contributed to a commercially relevant presence (whether successful or not) of the goods and services. Use of a CTM within a single Member State was not, of itself, necessarily sufficient to constitute genuine use because the territorial scope of the use was merely one of the factors that must be considered. However, use in a single Member State did not necessarily preclude that use being characterised as genuine use in the Community.
Leno had opposed Hagelkruis’ application on 27 July 2009 for the word mark OMEL as a Benelux trade mark for services in classes 35, 41 and 45 on the basis of its earlier CTM ONEL, which was registered on 18 August 2009 for services in classes 35, 41 and 42. As part of the opposition proceedings, Hagelkruis requested that Leno provide proof of use of the earlier CTM. It was common ground that the marks were similar, that the services were identical or similar and there existed a likelihood of confusion. The dispute centred on whether Leno’s proof of use of its CTM in the Netherlands, i.e., a single Member State, was sufficient to demonstrate genuine use within the meaning of Article 15(1).
AG Sharpston observed that the justification for protection in the 27 Member States is undermined if a mark is not actually used. National trade marks must be put to use within that Member State whereas CTMs must be put to genuine use in the Community. The aim of the requirement is the same, that the Register does not contain marks that serve no commercial purpose and which obstruct rather than improve competition in the market.
In AG Sharpston’s opinion, “genuine use in the Community” was an indivisible concept and not cummulative conditions to be examined separately. In AG Sharpston’s opinion, territorial scope of use is only one of the several factors to be taken into account in determining whether use is genuine. Therefore, while the place of use is a factor, it is neither an independent condition nor the sole or dominant factor in determining genuine use.
AG Sharpston rejected several parties’ submissions base on the CJEU’s decision in Pago (Case C-301/07) that genuine use means that the mark must be present “in a substantial part of the territory where it is protected”. In his opinion, Pago could not be transposed directly to this case as it dealt with reputation in the Community. Genuine use required that a mark had been used in accordance with its essential origin-indicating function, in order to create or preserve an outlet for the goods and services. An assessment of genuine use was based on all the facts and circumstances of the case, including the characteristics of the economic sector and the market at issue, the nature of the goods and services protected and the scale and frequency of the use.
The CTM was established for undertakings who wished to carry out activities on a Community level in the internal market where there was no distinction based on territorial borders between Member States. All forms of use, such as the commercial presence of the mark and the goods or services within the internal market, must be examined to determine whether the condition of genuine use had been satisfied. In AG Sharpston’s opinion, both the use in the Netherlands and use (or non-use) outside the Netherlands were equally relevant factors for national Court to consider.
Each case had to be assessed on the facts based on the determination of the characteristics of the internal market for the particular goods or services, which may change over the relevant time period. There might be barriers to access in parts of the internal market and particularly concentrated use in one area might play a more significant role in the assessment of genuine use than use in other parts where there was less demand. Furthermore, more localised use of a CTM could produce an effect whereby the goods were known, in a commercially relevant manner, by participants in the market beyond where that local use had occurred. AG Sharpston noted, however, that, in his opinion, use of a mark on a website that was accessible to all Member States was not by definition genuine use in the Community.
Waseem Ghias T/A GRILLER v Esmail Adia T/A GRILLER KING & Ots (Kitchin LJ;  EWCA Civ 919; 04.05.12)
Kitchin LJ refused Griller’s application for permission to appeal against those parts of the decision of Miss Recorder Michaels in which she dismissed Griller’s claims of trade mark infringement against Griller King and the second and third respondents, trading as “Griller Hut” (reported in CIPA Journal, February 2012).
Kitchin LJ found that the Recorder had not fallen into error by failing to take proper account of the decision of the CJEU in Case C-120/04 Medion AG v Thompson. The Judge held that Medion did not purport to lay down any absolute rule that whenever a composite sign contained a distinctive component, which was the subject of some earlier registered mark, a finding of a risk of confusion must necessarily follow. On the other hand, if, in the sign in issue, the earlier mark still had an independent distinctive role such that the public might believe that the goods or services in question came from the same undertaking or, as the case may be, from economically linked undertakings, then there would indeed be a likelihood of confusion.
Although the Recorder had said that the dominant or independently distinctive word “Griller” was used in the signs complained of, Kitchin LJ was of the view that this observation had to be seen in the context of the Recorder’s whole comparison which led her to conclude that the composite signs, as a result of the word “King” in one case and “Hut” in the other were not sufficiently similar to the registered marks to create a likelihood of confusion.
The Judge went on to reject three other grounds of appeal, finding that the Recorder had not failed to: (i) take proper account of Griller’s evidence of use and reputation; (ii) apply the global appreciation test; and (iii) give proper weight to the fact that, as a litigant in person, Griller could not be faulted for failing to use the words “passing off” in his claim.
Interflora Inc & Anr v Marks & Spencer Plc & Anr* (Arnold J;  EWHC 1722 (Ch); 26.06.12)
In ongoing trade mark infringement proceedings between the parties relating to keyword advertising, Arnold J granted Interflora permission to adduce witness evidence at trial from witnesses gathered from one pilot survey, but not another.
Arnold J noted that the present state of the law was that evidence obtained from witnesses by virtue of the fact that they had been respondents to a survey was admissible and may be probative, even though the survey itself was not and could not be relied upon, and even thought the survey questions were flawed. The Judge’s view was it was impossible to draw a hard and fast distinction between questions which were objectionable and those which were not. Although the question in issue in Interflora’s first survey was leading to a degree, the Judge held that it was not so flawed as to taint any evidence that may be obtained from a witness as a result. However, the Judge refused permission for Interflora to adduce witness evidence from Interflora’s second survey, as the question in issue fell on the other side of the line and went as far as to be misleading.
The Judge criticised Marks & Spencer for treating the present application as a major piece of satellite litigation in its own right, stating that its extensive evidence, including expert evidence, was not appropriate on such an application.
High Court holds Samsung’s “Galaxy” tablet does not infringe Apple’s registered design for its “iPad” device
Samsung Electronics (UK) Ltd v Apple Inc* (Judge Birss QC;  EWHC 1882 (Pat); 09.07.12)
Judge Birss (sitting as a Judge of the High Court) held that Samsung’s “Galaxy” three models of tablet computer did not infringe Apple’s Registered Community Design (“RCD”) for its “iPad” device.
This was the first substantive hearing in the Community of the issue of infringement and formed part of an ongoing international dispute between the parties concerning their respective tablet computers. Samsung sought a declaration of non-infringement and Apple counterclaimed for infringement of its RCD.
Samsung’s Galaxy tablet:
Apple had previously applied for a stay of its infringement counterclaim on the basis that the validity of its registered design was in issue on application to OHIM. On appeal, the Court of Appeal had held that the question whether there were special grounds under Article 91(1) of Community Design Regulation (6/2002) for not staying Apple’s counterclaim was a matter to be determined at trial (reported in CIPA Journal, June 2012). Judge Birss concluded that there were special grounds not to stay the action, including: (i) both parties agreed that there should not be a stay; (ii) Samsung had not sought a declaration of invalidity in these proceedings; (iii) there was no risk of inconsistent judgments between the Community designs court and OHIM; and (iv) the matter was plainly commercially urgent.
Judge Birss assessed the following seven features which Apple submitted were the similarities between its design and the Galaxy, considering each against the design corpus and from the point of view of design freedom. The Judge concluded as follows:
Feature 1: A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners
There was design freedom despite the rectangular shape being driven by the use of a rectangular screen and the ubiquity of rounded corners. The Galaxy tablet was identical to Apple’s design in this respect but the design corpus contained similar designs, thereby reducing its significance.
Feature 2: A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim
While all displays had a border feature, the degree of ornamentation and presence of a bezel was a matter of design choice. Although the Galaxy and Apple’s design looked very close, they were not identical due to a small degree of ornamentation on the Galaxy tablet (a clearly visible camera hole, speaker grille and the Samsung logo). Since the design corpus contained similar designs the significance of this feature was reduced.
Feature 3: A very thin rim of constant width, surrounding and flush with the front transparent surface
The designer had significant design freedom and the similarity between the Galaxy and Apple’s design would be striking but for the feature’s presence in the design corpus.
Feature 4: A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface
Design freedom of the display screen and border was considerably constrained but that alone did not account for the close similarity between the Galaxy and Apple’s design. The significance of the similarity was reduced by the presence of the feature in the design corpus.
Feature 5: A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge
A flat back was generally required for functional reasons but other features such as screw holes on the back were not. The informed user would recognise Apple’s design as belonging to a familiar class of products with somewhat curved sides and a fairly crisp edge. Apple’s design and the Galaxy belonged to this same design family despite a minor difference in the curving.
Feature 6: A thin profile, the impression of which was emphasised by (5) above
There was a trend in electronics to make devices thinner. Relative to the design corpus Apple’s design was not exceptionally thin. Using a curve or cut-away between the side edge and the back to enhance the appearance of thinness was a commonplace technique. The informed user would notice that the Galaxy was much thinner than Apple’s design (by about half).
Feature 7: Overall, a design of extreme simplicity without features which specify orientation
Apple’s design was extremely simple with no detail or ornament on the front or back but there was no functional constraint forcing designers to make extremely simple, featureless designs. A number of devices in the design corpus had quite busy designs indicative of a high degree of design freedom. The informed user was not used to seeing decorative features on rear faces. The Galaxy and Apple’s designs were very similar from the front but the backs differed.
The Judge then went on to consider the overall impression of Apple’s design on the informed user, concluding that the most important differences were the thinness of the Galaxy and the detailing on the back. While the informed user would regard the front of the Galaxy and Apple’s design as looking like members of the same, pre-existing family, the Galaxy did not have the same understated and extreme simplicity possessed by Apple’s design; it was not as cool, and therefore produced a different overall impression.
Registered Community Design for ice bucket in the form of a bag held valid and infringed
Gimex International Groupe Import Export (“Gimex”) v The Chill Bag Company Ltd and Ots (“Chill Bag”)* (Judge Birss;  EWPCC 31; 20.07.12)
Judge Birss found that Gimex’ Registered Community Design for an ice bucket in the form of a bag was valid and infringed by the defendants’ “Chill Bag” product.
Gimex’s product was an “ice bucket bag” called the “Ice Bag” into which water and ice were placed followed by a wine or champagne bottle to be chilled, as shown below:
Chill Bag had produced an ice bucket bag called the “Chill Bag”, as shown below:
Gimex claimed that the Chill Bag infringed its registered design for its Ice Bag product, as shown below:
The defendants contended that the Chill Bag did not infringe and that the RCD was invalid on the grounds that it was not new and lacked individual character, relying upon a prior Gimex product called “Transline” which was a bag used simply to carry wine bottles, as shown below:
Referring to Green Lane v PMS International Group  FSR 28, Judge Birss found that Transline could not be excluded from the prior art simply because it had been used for a different purpose from that of the registered design. It was not relevant whether the cited prior art was part of the informed user’s “design awareness”; to be valid the design had to have individual character taking that cited prior art into account.
As to whether the intended function of the product could/should be taken into account when considering the overall impression, Judge Birss concluded that the use to which a product is put played a part in the characterisation of the informed user since they were a user of the product, but it did not constrain what prior art may or may not be citable. Once the product in question had been identified, the informed user could be identified, and questions of design freedom were considered from the point of view of the type of product the informed user used. While cited prior art might not be a design for a product of the kind of which the informed user had gained experience, and would not be part of their design awareness, it still had to be considered for the purposes of novelty and individual character.
Although the register indicated the product was an ice bag, Judge Birss considered the correct definition to be “bottle chillers”, covering ice buckets, wine coolers, wine cooling sleeves and the like. The informed user was therefore a user of bottle chillers and their design awareness arose from using those products. In relation to design freedom, the Judge held that the functional constraints extended as far as that the products had to be able to chill a bottle of wine. However, this constraint allowed for a fair degree of freedom and these were design led products.
The Judge found that the overall impression on an informed user created by the Transline was different to that produced by the Ice Bag design. The fact that the Transline could be seen as just a bag and not a bottle chiller meant that to the informed user the visual differences were more significant. Although the Judge found that the scope of protection was relatively narrow, the Ice Bag had individual character and was valid.