IP Snapshot March 2012

TRADE MARKS Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24, 31 January 2012 The Court of Appeal has partially overturned a decision of the High Court, finding that a marketing campaign by Asda, targeted at customers of Specsavers, infringed Specsavers' word and logo marks. In doing so, the Court of Appeal has referred a number of questions to the Court of Justice of the European Union (CJEU). Such questions particularly relate to the validity of wordless marks when used only in conjunction with a separate word mark. For our full Law-Now of this important decision, click here Wintersteiger AG v Products 4U Sondermaschinenbau GmbH C-523/10, 16 February 2012 The Advocate General has provided his opinion on the interpretation of Article 5(3) of Regulation 44/2001 in the context of trade mark infringement through the use of AdWords, stating: "Where conduct occurs via the internet which is liable to infringe a national trade mark registered in a Member State, Article 5(3) of Regulation 44/2001 must be interpreted as meaning that it attributes jurisdiction to the courts of the Member State in which the trade mark is registered and to the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used." The Advocate General noted that in order to assess the location where the damage occurs and where the event giving rise to the damage takes place it is necessary (1) to establish that "there are objective elements which enable the identification of conduct which is in itself intended to have an extraterritorial dimension" - these elements include the language used, the accessibility of the information and whether the defendant operates commercially in the jurisdiction where the mark is registered; and (2) to consider the territorial scope of the dissemination of the information - the top-level domain, the location data supplied on the website and location of the information providers business will all be relevant. For the full text of the decision, click here Helena Rubinstein SNC and another v OHIM, Case C-100/11P, Advocate General's Opinion, 16 February 2012

The Advocate General has recommended that appeals brought by Helena Rubinstein and L'Oreal against both General Court and OHIM Board of Appeal decisions to grant the owner of the BOTOX brand a declaration of invalidity against their registered word marks BOTOLIST and BOTOCYL should be rejected. The Advocate General's opinion agrees with the previous findings that the later marks were detrimental to the distinctive character or repute of the earlier mark and took unfair advantage of it. The Advocate General took the view that the General Court had not made any mistakes in assessing the evidence and applying the...