IP Snapshot - April 2009

Bringing you monthly news of key developments in intellectual

property law.

TRADE MARKS

Application to register PICASSO and opposition no. 94853, 26

February 2009

A hearing officer has dismissed the Picasso estate's

opposition to an application by Manders Paints Limited to register

PICASSO for paints in class 2.

For the full text of this decision, click

here.

Essex Trading Standards v Wallati Singh [2009] WLR (D) 81, 3

March 2009

The High Court (Divisional Court) allowed an appeal by a trading

standards authority, ruling that a market trader had not

established a defence to the criminal offence of trade mark

infringement under section 92(5) of the Trade Marks Act 1994 (TMA).

The market trader failed to show that he had objectively reasonable

grounds for believing that the goods were genuine. This illustrates

the near strict-liability nature of the offence under section 92 of

the TMA, as the circumstances in which the defence under section

92(5) might be available will be difficult to establish.

For the full text of this decision, click here.

In the matter of opposition no. 93383 by Parker Intangibles LLC

to application no. 2368347 by Tom Parker Limited, 4 March 2009

The Appointed Person refused to exercise her discretion under

section 76(3) of the Trade Marks Act 1994 ("TMA") to

refer an appeal against a hearing officer's decision in

opposition proceedings to the High Court. The decision relates to

the operation of section 76(3), which deals with the

'mechanics' of the referral, rather than to the substance

of the appeal itself.

For the full text of this decision, click here.

Antartica Srl v OHIM, Case C-320/07 P, 12 March 2009

The ECJ rejected an appeal from the CFI, finding that the mark

NASDAQ for sporting equipment and bikes would take unfair advantage

of the distinctive character and reputation of the earlier mark

NASDAQ for stock exchange price quotation services and financial

services. The ECJ rejected the Appellant's argument that to

qualify under Article 8(5), the reputation of the earlier mark

should extend to the general public and not only to the consumers

of the goods designated by that trade mark. The ECJ also rejected

an argument that unfair advantage would only arise if it were

proven that the consumers of the later mark specifically knew of

the earlier mark, or the particular sector in which the later mark

would be used were familiar with the earlier mark.

For the full text of this decision, click here.

Chocoladefabriken...