IP Snapshot - December 2008

TRADE MARKS

Lego Juris A/S -v- OHIM, intervener Mega Brands Inc, Case

T-270/06, CFI, 12 November 2008

OHIM dismissed an appeal from the Grand Board of Appeal in

finding that an application for a 3D mark representing a Lego brick

was invalid under Article 7(1)(e)(ii) of the Community Trade Mark

Regulation relating to shape marks. A 3D mark which consists of a

shape necessary to obtain a technical result will not be

registrable even if the technical result which it achieves could be

achieved by other shapes.

For the full text of the decision, click here.

Crocodile International Private Limited v La Chemise Lacoste

[2008] EWHC 2672 (Ch) 8

The High Court dismissed the claimant's application for

summary judgment in an action for revocation of a trade mark on the

grounds of non-use under section 46(1)(a) TMA 1994. The claim was

dismissed on the basis that Lacoste were making genuine use of

their trade mark by including it on the swing tags of their tennis

shirts. The fact that the tags were hidden was irrelevant because

the customers would need to look at the tags in order to determine

the price of the shirts.

The Chancellor expressed support for the decision in La Mer

Technology Inc v Laboratories Goemar [2005] EWCA Civ 978 by

finding that the use of the mark by the shirt manufacturer and the

manufacturer's associated company in collection plans and

receipts respectively was sufficient to constitute external use.

This usage would therefore not fall foul of the ECJ decision in

Ansul BV v Ajax Brandbeveligung BV (C-40/01) [2003] EMTR

85 which held that internal use was not sufficient for 'genuine

use'.

For the full text of the decision, click here.

Shaker v OHIM, CFI, 12 November 2008

The CFI has reversed its previous ruling after a reference to

the ECJ to rule that there is a likelihood of confusion between the

word mark LIMOCHELO and the figurative mark containing the phrase

'limoncello della costiera amalfitana' and the word

'shaker', for the same goods.

For the full text of the decision, click here.

COPYRIGHT

Lancaster and another v Handle Artists Management Limited and

others [2008] EWCA, 22 April 2008

The Court of Appeal has overturned an earlier judgment that a

widely worded deed of release which purported to make a clean break

regarding band royalties should be read more narrowly in the

context of a confused factual background. The deed was in the broad

language of a clean break, and there was nothing in either it or

the factual matrix to...