Posts Tagged ‘trade marks’

Court of Appeal sheds Sun-light on M-Tech’s Euro-defences

Friday, August 27th, 2010

Oracle (formally Sun Microsystems) brought infringement proceedings against M-Tech for importing disk drives (bearing the SUN trade marks) without its consent into the European Economic Area (EEA) that had been first marketed outside the EEA. Under European trade mark law, putting goods on the market in the EEA without the trade mark owner’s consent amounts to trade mark infringement.

Oracle deliberately does not publish information about whether its goods have first been sold in the EEA, making it virtually impossible for re-sellers to know where the goods were first marketed. This acts as a deterrent to the importation of Oracle hardware generally, regardless of place of first marketing.

M-Tech said Oracle’s policy was contrary to European competition law but the High Court granted summary judgment in Oracle’s favour. The decision was overturned by the Court of Appeal who decided that M-Tech had a real prospect of success with its so called “Euro-defences”.

M-Tech still needs to establish those arguments in order to win its case and we could be waiting some time for an answer, given that a reference to the Court of Justice of the European Communities looks likely.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

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Consent under a Co-existence Agreement is a Bar to Opposition

Thursday, June 10th, 2010

The High Court has upheld a decision that consent given under a co-existence agreement to the registration of a trade mark for certain goods was a bar to opposition on relative grounds, citing section 5(5) of the Trade Marks Act.

Omega Engineering argued that Omega SA had no right to oppose its application to register OMEGA in respect of certain goods since it had expressly agreed not to do so under a co-existence agreement between the two parties. Omega SA argued, amongst other things, that the co-existence agreement was irrelevant to an objection made on relative grounds. Mr Justice Arnold disagreed stating that it would be unjust if a party who had consented to the registration of a trade mark could successfully oppose the application to register it.

This has to be the right decision otherwise the usefulness of co-existence agreements would be severely threatened.

Sara McNeill

Posted by Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

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