IP Snapshot - September/October 2009

TRADE MARKS Lilly Icos LLC & Others v 8pm Chemists & Others, [2009] EWHC 1905 (Ch), 31 July 2009 The claimants applied for and obtained a preliminary injunction relating to parallel imported goods, which was later discharged when the Court of Appeal decided that the goods did not infringe the claimants' trade marks and that no injunction was warranted. As part of the injunction application the claimants were obliged to give a cross undertaking in damages to the defendants to compensate for any loss suffered should the injunction later be overturned. Here the High Court considered how to quantify those damages. It decided that the claimants were jointly liable to compensate the defendants (who had lost their business in Turkey) for loss of profits and rejected the claimants' arguments that ordering payment would be against public policy.

For the full text of the decision, click here.

Nude Brands Limited v Stella McCartney Limited and others, High Court, Case No: HC09C02715 20 August 2009 The High Court refused to grant an interim injunction to Nude Brands Limited ("NBL"). The claimants had alleged that the defendants would be infringing "NBL's" trade mark for the word "NUDE" by applying the sign "STELLANUDE" to perfume products. Mr. Justice Floyd decided that on the balance of injustice the potential harm to the defendants should the court grant the injunction was greater than would be suffered by the claimant were the court to refuse it. The financial consequences to the defendants in delaying the launch of their product (the wheels of which has already been set in motion) were great, the likelihood of actual confusion between the products in the market place was minimal and NBL had already licensed it's mark NUDE in relation to a range of products that were closer to their core business (skincare) than the present product without putting quality control mechanisms in place.

For the full text of the decision, click here.

Bambino Mio Limited v Cazitex N.V [2009] EWCA Civ 922, 29 July 2009 The Court of Appeal upheld the High Court's finding that the sign, "Bambineo" used in the sale of nappies, did not infringe the trade mark, "Bambino Mio", registered for use on nappies. The High Court had assessed whether there was any likelihood of confusion between the marks, and had correctly considered the factors relevant to the assessment of confusion as summarised in the case of Julius Sämann ltd v Tetrosyl [2006] ("Sämann ") , namely the visual, aural and conceptual similarity of the marks. However, the judge had referred to an additional Sämann factor, which is only relevant in cases where the defendant and claimant's goods are similar not identical (not the case here). Nevertheless, this additional factor did not form the basis of the court's decision; it had merely been used as a cross-check. Accordingly, the Court of Appeal upheld the finding that there was no likelihood of confusion and therefore no infringement.

For the full text of the decision, click here.

Aceites del Sur-Coosur SA v Koipe Corporacion SL and Office for Harmonisation in the Internal market ("OHIM") Case C-498/07, 3 September 2009 The European Court of...