Intellectual Property Law: Trade Marks

Societe des Produits Nestle SA v Cadbury UK Ltd, Ch Div (Judge Birss QC), 1/10/12
An appeal against the decision of a hearing officer allowing the registration of a shade of purple defined by a Pantone code as a trade mark for chocolate was dismissed, save that the specification of goods was limited to milk chocolate. A trade mark consisting of a single colour per se was capable of satisfying art. 2 of Directive 2008/95. The word ‘predominant’ did not introduce any more vagueness or uncertainty than was already present and acceptable in such a registration. In the instant case the evidence showed that the purple shade was distinctive of Cadburys for milk chocolate.

Starbucks (HK) Ltd v British Sky Broadcasting Group Plc & Ors: EMI (IP) Ltd & Ors v BskyB, CA (Etherton, Patten, Tomlinson LJJ), 13/9/12

Two appeals were dismissed against decisions refusing and granting (respectively) stays of trade mark infringement proceedings pending invalidity proceedings at OHIM. Both decisions concerned the launch of BskyB’s new internet television service under the name NOW TV, and the claimants’ CTM registrations of the word “now”. The presumption in favour of a stay of infringement proceedings under art.104 (1) of Reg 207/2009 was a strong one. However the first action, with Starbucks as claimant, was an exceptional one in which there were special grounds within art.104(1) for refusing a stay and ordering an expedited trial. The judge in the second action was entitled to take a different view of the urgency and was right to grant a stay.

Fayus Inc & Anr v Flying Trade Group Plc, PCC (Judge Birss QC), 20/09/12
The court gave a preliminary, non-binding opinion that the claimant had a strong case of passing off and that the defendant’s registered mark was liable to be declared invalid under s.5(4) of the Trade Marks Act 1994.