The IP Enterprise Court has decided that certain sales of clothing branded with the registered trade mark “VEUVE CLICQUOT” were not covered by the scope of consents from the trade mark owners to the use of the marks.
The sales by the defendants therefore amounted to trade mark infringement and passing off. There were a number of defendants and the court said they were all liable.
The court awarded the trade mark owners £125,000 in damages and granted an injunction to prevent further infringement and passing off.
This case demonstrates the importance of ensuring that your licences to use intellectual property are wide enough for the needs of your business, and the necessity to stay within the remits of those licences.
If you need any advice on such issues, please email Karen.Mason@Novalex.co.uk
The EU General Court has dismissed an appeal against the revocation of a trade mark registered in respect of various building materials, on the ground that the proprietor had not, in the five years since registration, demonstrated genuine use of the trade mark in the EU in relation to the goods for which it had been registered.
The invoices incorporating the trade mark produced as evidence of use were of relatively low value when compared to the proprietor’s overall volume of sales of the goods concerned. It followed from case law that the smaller the commercial volume of the exploitation of a mark, the greater the need for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use.
However, the additional evidence produced by the proprietor in no way adequately compensated for the low sales volume represented by the invoices bearing the mark. In particular, the mark did not appear on the extracts from the proprietor’s website and the catalogues produced did not allow the conclusion to be drawn that the goods appearing in them had been marketed under the contested mark during the relevant period
In a case involving parallel imports of a drug into the UK from other European countries, the High Court held that the importer infringed the claimant’s trade marks by re-branding the European product with the brand name of the UK product.
Even though the re-branding was necessary in order for the defendants to compete on the UK market, this did not provide a defence to infringement.
The Intellectual Property Enterprise Court has declared invalid the Community trade mark THE UKULELE ORCHESTRA OF GREAT BRITAIN registered in relation to various goods and services including CDs, DVDs and concerts, on the grounds that is descriptive and non-distinctive.
However, the court ruled that the use of the name “The United Kingdom Ukulele Orchestra” by a group of ukulele players would have infringed the trade mark had it been valid (on the grounds of likelihood of confusion and dilution), and that the principal defendant was, in any event, liable in passing off.
This decision may be useful to brand-owners in that it highlights certain types of trade mark that will be vulnerable to attacks on validity where protection is sought across the EU.