IP Snapshot – May 2009

TRADE MARKS

Waterford Wedgwood plc v OHIM, ECJ, Case C-398/07, 7 May 2009

The ECJ has dismissed an appeal from the CFI which had found no likelihood of confusion between a logo mark for "Waterford Stellenbosch" for wines and the earlier word mark WATERFORD, owned by Waterford Wedgewood for wine glasses.

For the full text of this decision, click here.

Copad SA v Christian Dior couture SA and others, Case C-59/08, 23 April 2009

Owners of luxury good brands will welcome the ECJ’s decision in Copad SA v Christian Dior couture SA and others, Case C-59/08, 23 April 2009, ruling in favour of the Dior mark in a dispute relating to the sale of Christian Dior branded goods outside a selective distribution network in breach of a trade mark licence.  The court determined three questions on the interpretation of the Trade Marks Directive (89/104/EEC) (the “Directive”) following a reference from the French courts.  Among other things, it acknowledged the ability of trade mark owners to invoke their rights under the Directive if breach of a trade mark licence damages the allure and prestige of goods sold under the mark.

For the full text of our Law-Now update on this, click here.

Pago International GmbH v Tirol Milch registrierte Genossenschaft mbH, Case C-301/07, 30 April 2009

A reference was made by the Austrian Supreme Court on the meaning of “reputation in the Community” in Article 9(1)(c) of the Community Trade Mark Regulation.

The AG’s opinion is that a CTM is protected in the Community under Article 9(1)(c) only if it has a reputation in a substantial part of the Community. What constitutes a substantial part of the Community is not dependent on national boundaries but must be determined by assessing all the relevant circumstances of the case. Further, where a CTM has a reputation limited to an area which is not a ‘substantial part’ of the Community, a prohibition against infringement limited to that area cannot be issued.   

For the full text of this opinion, click here.

BORCO-Marken-Import Matthiesen GmbH & Co. KG v OHIM, CFI, 29 April 2009

The CFI has criticised the OHIM Board of Appeal’s approach to a CTM application for the Greek letter “a” for alcoholic drinks.  The Board of Appeal drew a number of blanket conclusions in respect of single-letter marks, including that they inevitably lack distinctive character and that they must not be registered because, as a matter of policy, single letters must remain generally available to all.  The CFI re-emphasised that, regardless of the type of mark in issue, the analysis to be carried out, on the basis of all the facts, is whether the mark applied for is capable of distinguishing the goods or services of the applicant from the goods or services of others.  

For the full text of this decision, click here.

PATENTS

Game machine/NINTENDO T 0012/08  (6 February 2009)

The European Patent Office Technical Board of Appeal held that a games machine that varied the probability of a character appearing according to time was patentable and it did not fall within the games exclusion.

For the full text of this decision, click here.

Airflow rate control apparatus Hitachi T1510/06 & T1511/06, EPO Board of Appeal 25 September 2008 

The Board of Appeal of the European Patent Office found that a prior use consisting of the sale of throttle valves made in accordance with two opposed patents as part of car was sufficient to destroy the novelty of the patents in suit in the absence of an express confidentiality agreement.

For the full text of these decisions, click here and here.