IP Snapshot - December 2010

Bringing you regular news of key developments in intellectual property law.

TRADE MARKS

The Olympics, Paralympics and London Olympics Association Rights (Infringement Proceedings) Regulations 2010, SI 2010 no. 2477.

These Regulations provide for the High Court to make orders concerning goods infringing the London Olympics association right, which arises from the London Olympic and Paralympic Games Act 2006. The Regulations also make amendment to the Olympic Association Right (Infringement Proceedings) Regulations 1995 which concern enforcement of the Olympics Association Right (arising from the Olympic Symbol etc. (Protection) Act 1995) in order to ensure that the 1995 Regulations apply to the Paralympic Games. For the full text of the regulations, click here (1) Och-Ziff Management Europe Ltd (2) OZ Management LP v (1) OCH Capital LLP (2) Union Investment Management Ltd (3) Thomas Tadeus Antoni Ochocki [2010] EWHC 2599 (Ch) (High Court)

The Claimants' dispute related to a Community Trade Mark (CTM) for OCH-ZIFF and the use by the Defendant, OCH Capital, under the marks "OCH" and "OCH CAPITAL". This case is the first to specifically endorse the doctrine of initial interest confusion and confirm that a trade mark can be infringed under Article 9(1)(b) (likelihood of confusion) even where by the time of purchase the consumer is no longer confused as to the origin of the goods and services.

For our full Law-Now on this important decision, click here

For the full text of the decision, click here

Strategi Group Ltd v OHIM, Case T-92/09

The EU General Court upheld an OHIM Board of Appeal decision that the publisher of the magazine Strategies and the owner of the work mark STRATEGIÉS (registered in France for a number of goods and services) was entitled to rely on its use of its mark as a magazine title in opposition proceedings to an application to register the word mark STRATEGI as a CTM in Class 35. The court ruled that the appeal board was right to hold that a magazine title could constitute a valid use of a trade mark, provided that the services in question were provided through the magazine. For the full text of the decision, click here

DHL Express (France) SAS v Chronopost SA

Case C-235/09, Advocate General's opinion Chronopost brought trade mark infringement proceedings against DHL before the French court in respect of the word "WEBSHIPPING". It was held that there had been trade mark infringement and the court made an order prohibiting DHL from continuing with the infringing acts in France. It was referred to the ECJ to ascertain the territorial scope of the prohibition and the supporting penalty payment. The Attorney General considered that a prohibition issued by a national court acting as a Community trade mark court has effect as a matter of law throughout the entire area of the EU. However, where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court's...