IP Snapshot May 2012

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


Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, Case C 523/10, 19 April 2012

The CJEU has ruled on the interpretation of Article 5(3) of Regulation (EC) No. 44/2001 in the context of trade mark infringement through the use of AdWords. The CJEU held that an action relating to infringement of a trade mark registered in a Member State, because of the use by an advertiser of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State, may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser. This decision may assist right owners in enforcing their rights against infringements through use of AdWords occurring on the internet and emanating in a jurisdiction in which the complainant has no rights. However, it is important to recognise that this only addresses the issue of the courts' jurisdiction and not whether infringement has actually occurred. For the full text of the decision, click here This decision follows the opinion of the Advocate General given in February 2012. For our IP Snapshot coverage of this earlier opinion, click here

Tea Forté Inc v OHIM, Case R 2492/2010-2, 14 February 2012

The OHIM Second Board of Appeal have rejected an appeal against the Cancellation Division's refusal to grant a declaration of invalidity in relation to a 3 dimensional pyramid shaped Community Trade Mark (CTM), registered in respect of tea, healthcare and packaging on the basis of an earlier CTM and Community registered design.

Although the marks both consisted of geometric shapes with string attached, the Cancellation Division found that there was a low degree of similarity between the earlier CTM and the contested mark as the element common to both signs (the pyramid structure) was recognised by the average European consumer as being a 'handy' shape for tea and not distinctive. Therefore, the consumer would pay attention to the elements which were fanciful or devoid of functionality and no likelihood of confusion existed. The claimant appealed, but the earlier decision was upheld by the board of appeal on the same grounds.

This case illustrates how much attention OHIM will pay to the distinguishing elements when marks are distinctive or generic within their field of use, and is also a reminder to ensure that registered design protection is consistent with the depiction of the accompanying CTM if...

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