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 confirmed a decision that “INVESTING FOR A NEW WORLD” was devoid of distinctive character and could not be registered as a Community Trade Mark (CTM).
The court said that the combination of common words was a banal expression which the relevant public did not need to analyse for it to be understood. The mark did not constitute a play on words or include any imaginative, surprising or unexpected elements capable of conferring distinctive character on it in the mind of the relevant public.
In addition, the applicant had not put forward any evidence demonstrating that the mark had acquired a reputation.
The High Court has found that the use by a car rental company, Europcar, of its “e” logo infringed a Community trade mark also incorporating the letter “e” and registered in relation to car rental services. The High Court also found Europcar liable in passing off.
Interestingly, the judge ruled that, when assessing of the likelihood of confusion in the UK, the relevant public could include residents of a foreign country. Similarly, in passing off, it appears that a claimant can rely on the deception of customers who are resident abroad.
On the face of it, the court’s finding of a likelihood of confusion was surprising given the low similarity of the two marks. However, the decision illustrates the importance of the context in which the mark is used.