IP Snapshot - October 2012

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

TRADE MARKS

IG Communications Ltd v OHIM, General Court, Case T-301/09, 26 September 2012

The EU General Court has found that the mark CITIGATE, applied for as a Community Trade Mark in respect of advertising and consultancy services and design services, infringed the CITIBANK family of marks. Infringement was found to occur either by similar mark/similar goods infringement where the services were similar to those for which the earlier marks were registered, or, where they were dissimilar, because they took unfair advantage of or caused detriment to the distinctive character or repute of the earlier marks. The General Court's comments on the concept of a "family" of marks are of particular interest.

For the full text of the decision, click here.

Wesergold Getränkeindustrie GmbH & Co. KG v OHIM, Case T-278/10, 21 September 2012

The EU General Court has annulled the Board of Appeal's decision in opposition proceedings regarding an application for a Community Trade Mark registration of the mark WESTERN GOLD with regard to spirits, in particular whisky. The opponent had claimed that the Community Trade Mark sought would infringe the earlier registered trade marks 'WeserGold', 'Wessergold' and WESERGOLD'.

The General Court agreed with the Board of Appeal that there was a low degree of similarity between the goods sold under the trade marks and that the marks themselves were significantly conceptually different (due to the difference in meaning between 'western' and 'weser') so as not to cause confusion. However, the court found that the Board of Appeal had erred in finding that the applicant had not claimed that the earlier marks had acquired enhanced distinctiveness through use.

For the full text of the decision, click here.

Reddig GmbH v OHIM, Case T-164/11, 19 September 2012

The EU General Court has upheld the decision of the Board of Appeal in relation to the invalidity of a Community Trade Mark for the shape of a knife handle. The Court held that the essential features of the mark were all exclusively functional. The fact that the knife handle also resembled the shape of a fish or a dolphin was irrelevant. The Court held that if the sum of the exclusively functional elements results in the creation of an ornamental image, this is not sufficient to avoid Article 7(1) of the Community Trade Mark Regulation, which states that signs constituting the shape of goods which is necessary to obtain a technical result cannot be registered. Accordingly, the claimant's application was dismissed.

For the full text of the decision, click here.

Starbucks (HK) Ltd. v British Sky Broadcasting Group Plc & Ors...