IP Snapshot - November 2008

TRADE MARKS

R v Boulter (Gary), Court of Appeal, 7 October 2008

The Court of Appeal dismissed an application for leave to appeal

against conviction for criminal trade mark infringement under s. 92

of the Trade Marks Act 1994 (the 'TMA'). The conviction

related to counterfeit DVDs and CDs bearing the logos of EMI and

other companies on the packaging. The court rejected the defence

that the material bearing the trade marks was of such poor quality

that there was no likelihood of public confusion as to the trade

origin of the goods. The court considered the meaning of trade mark

use under s. 10 of the TMA, and the differing judicial

interpretation of this point in the cases of R v Johnstone

and Arsenal Football Club plc v Reed.

For the full text of the decision, click here.

TIM The International Music Company AG, TTV

Tonträger-Vertrieb-2000 GmbH v OHIM, CFI, 23 October

The CFI rejected an appeal in relation to an application for a

declaration of invalidity against the word mark PAST PERFECT,

confirming that the mark was sufficiently distinctive and was not

descriptive. The case provides a useful reminder of the assessment

of marks on descriptive/distinctive grounds and illustrates that

many marks may need to be considered on both aspects.

For the full text of the decision, click

here.

R v Wendy Fair Markets & others Ltd and others, Court of

Appeal Criminal Division, [2008] EWCA Crim 2459, 16 October

2008

The first conviction of a market operator for money laundering

because it accepted rent from stallholders who sold counterfeit

goods has been overturned. The convictions of Wendy Fair Markets

and two of its directors were quashed because the original jury

summing-up had been defective.

The Court of Appeal found the summing up had left the jury

confused, and the defendants may have been convicted because of

perceived failures in the market's management, rather than

because they were guilty of specific charges.

PATENTS

Thorn Security Ltd v Siemens Schweiz AG [2008] EWCA Civ

1161

The Court of Appeal reversed the decision of the trial judge to

find that a patent was not infringed, disagreeing with the trial

judge's findings of fact.

The court also overturned the first instance ruling that s68 of

the Patents Act 1977 applies only to consensual bilateral

transactions. It held that a purposive construction was required,

and that on this basis, s68 must apply to all transfers of

ownership.

For the full text of the decision, click here.

Dr Reddy's...