The changes have led to widespread concern, with companies fearing reputational damage if their key brands and trade marks fall into the wrong hands. However, with a non-refundable “evaluation fee” of $185,000 and careful policing promised by the registries, there should be a significant barrier in the way of most Internet fraudsters.

The industry is estimating we will see around 1,500 initial applications for gTLDs. In our opinion, gTLDs represent a new frontier on the Internet and, in turn, a great opportunity for companies to stake their claim with key trade marks or creative new branding.

Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

Winters, a Dutch company, filled cans branded with names like “Bullfighter” and “Pitbull” with soft drink mix. The cans were produced by Smart Drinks, who then sold the finished products. As Smart Drinks were registered in the British Virgin Islands, Red Bull sued Winter for infringement of its Benelux trade mark.

The ECJ ruled that service providers would not infringe trade marks when executing a technical part of the production process of the final product where they had no interest in their external presentation. Winter created the technical conditions for Smart Drinks to use the products, but did not use the products themselves.

This position is likely to be controversial. The European Commission noted that this may allow producers to avoid enforcement by dividing the production process amongst such service providers.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

Cadbury are likely to claim as a victory the ruling that they have built up enough distinctive character in their purple shade through their use of it on chocolate in bar and tablet form and eating and drinking chocolate products.

However, it is worth noting that the registry agreed with Nestle that this distinctive association did not extend to their chocolate cakes, chocolate assortments, and some confectionery chocolate, and therefore Cadbury’s attempt to register trade marks in these areas was refused. Nevertheless, many will regard this as a victory for Cadbury in its long-running battle with Nestle.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

The design was previously ruled invalid because it did not create a different overall impression on the informed user than an earlier Promer design. A key facet of Pepsi’s appeal was that the General Court had incorrectly defined the “informed user” and his level of attentiveness.

The ECJ disagreed with Pepsi and stated that informed user lies “somewhere between … the average consumer… who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.

Although this is a welcome clarification, this case concerned a very simple design, and it seems likely that the courts will continue to grapple with this concept in less straightforward design fields.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The ECJ ruled (amongst other points):

• a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
• the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.

The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

Merck brought two cases complaining that various companies had infringed its trade marks by selling repackaged products which stated the repackaging had been carried out by one company when it had actually been carried out by another company in the same group.

Last week the court held that Merck’s rights were sufficiently protected by the companies marketing the pharmaceuticals putting their name on the packaging and therefore there was no trade mark infringement.

It is also worth noting the court’s previous comments that derogations from free movement of goods will only be permitted to the extent necessary to protect the specific subject matter and the essential function of a trade mark.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.

Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.

But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.

So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period. This means that Team Lotus can still enforce its unregistered rights in the name. The court also found that Team Lotus is entitled to register new trade marks for Team Lotus. Team Lotus was also found not to have infringed the Group Lotus trade marks.

However, Team Lotus could not prevent Group Lotus from racing in Formula 1 using the JPS black and gold livery, and it was found to have breached an earlier licensing agreement entered into with Group Lotus.

Perhaps the proof of the pudding is in the eating – both teams can continue to line up at this season’s Grand Prix with the names and liveries they were using before the judgment!

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The Defendant, Rockwool, manufactures insulation panels used in construction. They carried out an advertising campaign, comparing their product with that of their competitor, Kingspan, using fire tests to demonstrate the combustibility of the goods. Kingspan argued that the claims made about their product were false and misleading.

Kitchen J held that Rockwool infringed Kingspan’s trademarks under Article 5(1)(a) and (2) of the Trade Mark Directive and Article 9(1)(a) and (c) of the CTM Regulation, by taking unfair advantage of their trade mark and discrediting it, and that , Rockwool had not met the condition, under the Comparative Advertising Directive, of objectively comparing the products. Another claim for malicious falsehood was dismissed.

The decision should serve as a warning to businesses to take greater caution in ruthless advertising campaigns involving competitor’s products!

Posted by Declan Cushley, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Declan Cushley
0121 237 3993
dcushley@brownejacobson.com

Clearly this is not the end. UKTV has two months to decide whether to appeal. Indications are that it may well do so as, in an interesting twist of events, two days after the Opposition decision, UKTV filed a new application in the UK for DAVE covering goods and services for which the European opposition was successful. A more favourable decision from the UK Office would seem unlikely but nevertheless this is a interesting negotiation tactic of DAVE-jà-vu.

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

Why? Such shapes are devoid of distinctive character as they are the typical chocolate-shaped goods that one finds in their stocking at Christmas or receives as a gift at Easter, thus they fail to meet the requirements for shape protection under the Community trade mark regime. Unfortunately, the red ribbon collar and little silver bell didn’t help the reindeer and bunny leap over the distinctiveness hurdle either.

Was it the right decision? Well, it was certainly consistent with previous case law (think back to Guylian’s seahorse-shaped chocolate). Also, bearing in mind the ultimate purpose of a trade mark, to act as a badge of origin, the decision must be correct.

Posted by Sarah Fellows, who specialises in non-contentious intellectual property, and IT commercial agreements; familiar with a range of sectors, including technology, biosciences, retail and education.

Sarah Fellows
0115 976 6242
sfellows@brownejacobson.com

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

So where does that leave products whose shapes are dictated by technical functions? Design protection may be available for some features of shapes, but again there is an exclusion applying to features of a design which are solely dictated by technical function, so community registered and unregistered design rights may be of little assistance. If the product is novel and inventive, it may qualify for patent protection.

The ECJ gives little guidance as to when any non-technical features are sufficiently relevant so as to bring the shape within trade mark protection. Those seeking such protection will have to place a great emphasis on any non-technical features, to get over the hurdle of registrability – something which the Lego brick failed to do.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The Office of Harmonization for the Internal Market (OHIM) says not – an application for a community trade mark by Borco to register the Greek letter alpha – α – for wines was held to lack distinctive character, being a simple reproduction of the letter and also a mark that Greek consumers would not see as an indicator of origin.

Advocate General Bot thinks otherwise and contends the OHIM’s practice of automatically rejecting applications to register single letters as trademarks without a full assessment is wrong.

This decision follows swiftly on from recent decisions on colour marks and confirms that all marks must be examined on their capability of distinguishing their particular goods from those of others.

It is hard to see how the ECJ could fail to follow the Advocate General’s opinion. Clearly there are no short cuts to examining distinctiveness no matter how short the mark!

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

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
0121 237 3908
etuck@brownejacobson.com

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.

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