IP Snapshot July 2011

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

TRADE MARKS

Case T-318/09 Audi AG and another v OHIM, 6 July 2011

The General Court of the European Union rejected the applicants' appeal against the First Board of Appeal's decision refusing an application for registration of the word mark "TDI" as a CTM. The General Court considered that: (i) the mark TDI was a descriptive acronym (meaning "turbo direct injection" or "turbo diesel injection") which the public concerned would perceive as being a description of motor car vehicles or their components or one of their characteristics (Article 7(1)(3) Community Trade Mark Regulation); and, (ii) it had not been demonstrated that the sign had acquired a distinctive character through use in all Member States of the European Union pursuant to Article 7(3) Community Trade Mark Regulation.

This case highlights that the fact that a mark has been the subject of national and/or international registrations is irrelevant for the purpose of assessing whether it should qualify for registration as a CTM; and that market share statistics are not enough, on their own, to show that a mark has acquired distinctive character through use – there must be other evidence to link market share with the idea that the mark has a distinctive character in the minds of the public concerned.

For the full text of the decision, click here

Schütz (UK) Limited and Schütz GmbH v Delta Containers Limited and Protechna SA, High Court, 5 July 2011

The defendants' actions in replacing original bottles within a branded metal container, in circumstances where the claimants made and distributed a combined container and bottle product, infringed the claimants' trade marks and constituted passing off.

The claimants had already been in dispute in recent patent proceedings over the same issue against another defendant. The High Court had found that replacement of bottles within the container did not infringe the claimants' patent for a bulk container, whereas the Court of Appeal disagreed and found that the patent for the complete product (cage and bottle) was infringed. By placing a new bottle in the container, the defendant was completing the patented product (Schütz v Werit, [2011] EWCA Civ 303). As the defendants now cannot replace the bottle due to this patent judgment, this trade mark decision is therefore of relevance only to the time when the patent may have expired or if the Court of Appeal judgment is overturned by the Supreme Court.

For the full text of the decision, click here

Edwin Co. Ltd v Office for Harmonisation in the Internal Market, Case C-263/09 P, 5 July 2011

The Italian fashion designer Elio Fiorucci enjoyed victory at last on 5 July 2011, when the Court of Justice of the European Union confirmed the General Court's decision that, where national law permits, an individual can prevent the use of his name as a Community trade mark. An individual's right to a name, as protected under Article 8(3) in Italy, is not restricted...