IP Snapshot - July 2012

TRADE MARKS AND PASSING OFF

Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, 19 June 2012

The CJEU has ruled on the questions referred to it following the Chartered Institute of Patent Attorney's appeal against the refusal to allow its registration of "IP TRANSLATOR" in relation to Class 41 of the Nice Classification. Goods or services to be protected by a trade mark must be identified by an applicant with sufficient clarity and precision to enable competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought. An applicant may use all the general indications of a particular class to identify goods or services, but it must then also specify whether it intends to cover all or only some of the goods or services included in the alphabetical list of that class. For the full text of the decision, click here. Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd [2012] UKSC 27, 27 June 2012 In a long awaited decision, the Supreme Court has refused to allow a parallel trader to rely on so-called "Euro-defences" against a trade mark infringement claim, which will come as a great relief to brand owners across all industry sectors. The Supreme Court overturned the decision of the Court of Appeal and reinstated the summary judgment of the High Court, which had allowed Sun Microsystems' claim of trade mark infringement relating to second hand hardware imported from countries outside the EEA without its consent. The Supreme Court found that the Trade Mark Directive should be treated as "standalone" legislation and not subject to any additional limitation under competition law principles. Further, there was no relevant connection between the allegations made by the importer of anti-competitive behaviour by Sun Microsystems and the trade mark infringement claim. For the full text of this decision click here. For our full Law Now on this important decision click here. Constellation Brands Inc v OHIM, Case T 314/10, 28 June 2012

The General Court (Sixth Chamber) has upheld the decision of the First Board of Appeal of OHIM of 29 April 2010 (Case R 1048/2009-1) in dismissing an application for restitutio in integrum, which provides for the re-establishment of a Community Trade Mark (CTM) owner's rights in certain circumstances. The decision related to the failure by Constellation Brands, Inc, and its representative Boult Wade Tennant, to renew the CTM...