IP Snapshot June 2011

Best Buy Co Inc and another v Worldwide Sales Corporation Espana SL [2011] EWCA Civ 618, 24 May 2011

The Court of Appeal has reversed a judgment handed down by the High Court last year regarding the provisions governing unlawful threats of trade mark infringement proceedings in the UK. The Court considered that the trial judge had failed to consider the relevant letter as a whole and had focused too greatly on the final three paragraphs, such that the conclusion of the High Court that the letter qualified as without prejudice communication was erroneous. The case provides interesting guidance as to how a threat should be interpreted, and the extent to which a threat may benefit from "without prejudice" protection. For our Law Now of the decision, click here

Longevity Health Products Inc v OHIM, General Court, 24 May 2011

The General Court has determined that a CTM application brought by Longevity Health Products Inc, for the word mark E-PLEX applied in respect of various goods in class 5 including pharmaceutical and veterinary preparations, should not be registered due to a likelihood of confusion with an earlier Portuguese registered trade mark for EPILEX for "anti-epileptics" in class 5. For the full text of the decision, click here

Jean Christian Perfumes and another v Sanjay Thakrar, High Court, [2011] EWHC 1383 (Ch), 27 May 2011

The High Court has held that an oral licensee of a Community trade mark has locus to sue for infringement (in contrast to the position for UK trade marks, licences of which must be in writing) and that oral use of a Community trade mark can constitute infringement. For the full text of the decision, click here

Group Lotus plc and another v 1Malaysia Racing Team SDN BHD and others [2011] EWHC 1366 (Ch), 27 May 2011

The High Court has determined that there was no trade mark infringement or passing off in respect of various claims and counterclaims related to the word Lotus used in the context of Formula 1 racing. The Claimants, Group Lotus Plc and Lotus Cars Ltd, the manufacturers of Lotus cars, brought various actions (including breach of contract) against a number of Defendants, all associated with the Team Lotus Formula 1 racing team. Both parties were held to have separate goodwill in related fields – that of the manufacture and sale of sports cars, and the manufacture of racing cars. As such both parties were permitted to race in the F1 season as different teams; the court held that the nature of their...

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