Intellectual Property News Issue 71 1

October 2010

Intellectual Property News.

EU

Trade marks: Alpha bet

A trade mark does not need to comprise a minimum number of characters in

order to secure registration. The European Court of Justice (“ECJ”) has

endorsed the ruling of the General Court that the Community trade mark

office, OHIM, was wrong to assume, without taking into account the relevant

facts, that a trade mark application consisting of a single letter could not have

the necessary distinctive character (Case C-265-09, OHIM v BORCO-

Marken-Import Matthiesen GmbH & Co. KG, 9 September 2010).

The appellant, BORCO, applied for registration of the sign:

α as a Community trade mark (“CTM”) in respect of alcoholic beverages. The

examiner refused the application on the ground that the sign comprised the

Greek lower-case letter „α‟ without graphical modifications and that Greek-

speaking consumers would not detect in the sign an indication of the

commercial origin of the goods described in the application. The OHIM Fourth

Board of Appeal dismissed the applicant‟s appeal. The applicant appealed to

the General Court and the ECJ essentially upheld the General Court‟s

conclusions.

Under Article 4 of the CTM Regulation (207/2009), a CTM may consist of any

signs capable of being represented graphically, including letters, provided

that they are capable of distinguishing the goods or services of one

undertaking from those of another. A sign lacking distinctive character will be

refused registration on absolute grounds (Article 7(1)(b) CTM Regulation) (for

example, a sign depicting a banana might be distinctive for cars, but not for

the eponymous fruit or even fruit generally).

OHIM fell into error in finding, without citing any facts to support its view, that

the relevant consumer might view the letter „α‟ as a reference to the quality,

size or type of alcoholic beverage. OHIM wrongly assumed that the letter in

its unmodified form lacked, by definition, any distinctive character. This

conflicted with Article 4, which permits the registration of unmodified

Contents EU .................................... 1

France .............................. 3

UK .................................... 5

Conference Papers and Publications .................... 14

Intellectual Property News Issue 71 2

characters as a matter of principle. While the ECJ had previously recognised

that it might be more difficult to establish distinctiveness in relation to certain

categories of marks, for example, slogans (see e.g. Audi v OHIM C-398/08,

reported in IP News, April 2010), this did not excuse trade mark registries

from carrying out a thorough examination of their distinctive character based

on the ability of the relevant consumer to distinguish the goods and services

that it was intended to cover; mere doubts as to the distinctiveness of a sign

did not provide a legitimate basis on which to refuse a trade mark application.

Finally, the ECJ emphasised that it was for the registry to examine

distinctiveness. Only where an applicant claimed that the subject matter of its

application was distinctive despite the registry‟s analysis to the contrary

following a proper examination did the burden fall on the applicant to prove

distinctive character.

By Alex Batteson, London

Trade marks: Another brick in the wall part two

In the EU, the shapes of products are in principle entitled to trade mark

protection. However, the rules generally disqualify those shapes that are

functional in nature from registration in order to prevent perpetual monopolies

being obtained over technical solutions, which do not meet the comparatively

stringent conditions required for the shorter period of patent protection. The

ECJ has now had the final word on Lego‟s long-running fight to register its

iconic toy brick as a trade mark and refused registration on the ground that it

is purely functional in nature (Lego Juris S/A v OHIM, Case C-48/09, 14

September 2010). The ECJ‟s decision should help clarify any lingering

uncertainties over the correct interpretation of the rules left over by its

previous decision in Philips (Case C-299/99) (which concerned the validity of

a mark depicting a rotary shaver head).

Under the CTM Regulation, signs which consist exclusively of the shape of

goods which is necessary to obtain a technical result must not be registered

(Article 7(1)(e)(ii)). Lego‟s CTM application was originally filed in 1996 and

registered in 1999. The OHIM Cancellation Division declared it invalid in 2004

on the basis of Article 7(1)(e)(ii) and this decision was upheld by the OHIM

Grand Board of Appeal. The Court of First instance (as it then was) affirmed

the Grand Board‟s decision in 2008. Lego‟s final appeal has now been

rejected by the ECJ.

As the ECJ noted, Article 7(1)(e)(ii) is particularly strict in that, unlike other

grounds for absolute refusal of registrations, for instance non-distinctiveness,

it is not possible for a functional sign that has acquired distinctive character

through its use to obtain registration.

In essence, the ECJ confirmed that the scope of the exclusion turned on the

meaning of words “exclusively” and “necessary”.

Exclusively

A sign will consist exclusively of the shape of goods which is necessary to

obtain a technical result when all the essential characteristics of the shape

perform a technical function, the presence of non-essential characteristics –

mere doubts as

to the

distinctiveness

of a sign did

not provide a

legitimate basis

on which to

refuse a trade

mark application

Intellectual Property News Issue 71 3

or one or more arbitrary elements in a three-dimensional sign – being

irrelevant. In other words, where a decorative or imaginative element plays an

important role in the shape, the exclusion does not apply.

The ECJ held that there was no simple rule for identifying the essential

characteristics: depending on the complexity of the sign, the assessment

could be carried out through a simple visual analysis or a more detailed

examination involving consumer surveys or expert evidence. Whatever the

approach undertaken by the relevant examining authority or tribunal, the

perception of the notional average consumer was not decisive.

Necessary

The requirement that the shape must be necessary to obtain a technical

result in order to be refused registration does not mean that the shape must

be the only one capable of obtaining the intended technical result. If that were

the case, an applicant could seek to register the complete range of alternative

shapes that achieved the same technical solution and thus obtain a monopoly

over the solution, perhaps perpetually. Instead the shape must, in itself,

cause, and be sufficient to obtain, the intended technical result.

The ECJ drew support for this interpretation from the possibility that the

shape sought for registration might constitute the technically preferable

solution for the type of product, as in the case of the Lego brick. If such a

solution could be registered as a trade mark, competitors would find it difficult

to market products which presented real alternatives, namely, shapes which

were dissimilar but which were nevertheless attractive to the average

consumer.

Finally the ECJ added (somewhat enigmatically) that while trade mark rights

could not be used to prevent others from marketing slavish copies of a

product‟s shape which incorporated a particular technical solution, alternative

relief might be sought under unfair competition rules.

By Alex Batteson, London

France

Trade marks: Google news

The French Cour de Cassation has applied the ruling of the ECJ in Google

and ors v Louis Vuitton and ors (Joined Cases C-236/08 to C-238/08,

23 March 2010, reported as a Linklaters Hot Topic, 24 March 2010) and

decided that Google‟s provision of its AdWords tool did not in itself amount to

trade mark infringement.

The facts

Google supplies a keyword sponsorship service, AdWords, which enables

advertisements to be displayed alongside the results of a search. Advertisers

pay Google to display their advertisements; payments due are calculated on

the basis of the frequency with which users click on the links to the

advertisements. A number of trade mark owners, including Louis Vuitton,

the shape must,

in itself,

cause, and be

sufficient to

obtain, the

intended

technical result

Intellectual Property News Issue 71 4

sued Google France in France on the ground that use of their marks as

sponsored keywords amounted to trade mark infringement.

Use in the course of trade

The Cour de Cassation applied the ECJ‟s ruling that Google could not be held

liable for trade mark infringement since its AdWords service did not use the

trade marks in the course of trade. Although Google received payment for

placement of the advertisement links, it did not use them for its own

commercial communications, in particular, in order to enter a specific market.

On the other hand, advertisers acquiring trade marks as keywords through

the AdWords system may be liable for trade mark infringement where their

advertisements do not easily enable users to ascertain whether the goods or

services covered by the advertisements originate from the trade mark owner

or unconnected third parties.

The Cour de Cassation acknowledged the ECJ‟s ruling that Google could

benefit from the hosting defence under Article 14 of the E-Commerce

Directive (2000/31/EC). This would exclude Google from any joint liability with

an advertiser for infringement where it did not play an “active role” in the

advertiser‟s activities. However, Google would need to act swiftly and remove

infringing advertisements as soon as it became aware of them.

The ECJ did not decide whether the provision of Google‟s AdWords service

could be said to amount to an “active role”, since this was a matter for the

national court. However, in light of its finding that Google did not use the

claimants‟ marks in the course of trade, the Cour de Cassation did not

consider the question further.

The new Google AdWords procedure

In September, Google initiated a new policy for its AdWords service. Google

will not permit trade mark owners to block the reservation of their trade marks

as keywords. Instead Google has created a notification service allowing trade

mark owners to notify Google of infringing, or at least misleading,

advertisements.

The new procedure raises a number of issues. For instance, Google will be

responsible for assessing and possibly withdrawing misleading

advertisements despite having received payment for hosting their display.

How the new procedure will play out remains unclear, but it may paradoxically

expose Google to liability for infringement and deprive it of the benefit of the

hosting defence. For example, the “control” carried out by Google prior to the

publication of an advertisement may be considered to constitute an “active

role”.

By Sandra Georges, Paris

In September,

Google initiated

a new policy for

its AdWords

service

Intellectual Property News Issue 71 5

UK

Designs: Sucker punch

Design features that are purely functional in nature are generally not entitled

to registered design protection. This is a policy decision taken by the EU

legislature to prevent design rights from being used to obtain monopolies over

technical solutions which do not meet the comparatively stringent conditions

required for patent protection. Following a recent decision of the Patents

Court, it appears that this exclusion from protection may be broader than had

previously been thought and more in line with a similar provision to be found

in trade mark legislation (see Lego v OHIM, discussed above) (Dyson Ltd v

Vax Ltd [2010] EWHC 1923 (Pat), 29 July 2010).

Dyson is the owner of the registered design in respect of a vacuum cleaner

partially represented as follows:

Dyson sued Vax for infringement of the registration on the basis of Vax‟s

marketing of the following vacuum cleaner:

this exclusion

from protection

may be broader

than had

previously been

thought

Intellectual Property News Issue 71 6

Both the registration and Vax‟s cleaner possess a transparent dust collecting

bin.

The functionality exemption

Article 7(1) Designs Directive (98/71/EC) (which is reflected in UK registered

design legislation) provides that design right shall not subsist in features of

appearance of a product which are solely dictated by its technical function. In

Landor & Hawa International v Azure ([2006] EWCA 1285, FSR 9) Neuberger

LJ (as he then was) appeared to interpret the equivalent Article 8(1)

Community Designs Regulation narrowly by deciding that it applied only to a

design which was the only design by which the product in question could

perform its function; a functional design was entitled to protection where it

could be shown that the same technical function could be achieved by other

means, even though the design might, as a matter of fact, be dictated solely

by the function of the product.

Arnold J considered Neuberger LJ‟s interpretation to have been obiter and

thus felt free to adopt the ruling of the OHIM Third Board of Appeal in Case R-

690/2007-3 Lindner Recyclingtech v Franssons Verkstader, which had

rejected the approach taken in Landor on the basis that it could undermine

the policy underlying the exclusion: if a functional design were entitled to

protection where it could be shown that the same technical function could be

achieved by other means, a monopoly over the function could still be

obtained by the registration of each of those other means as designs. The

Board had thus decided that Article 8(1) denied protection only to those

features of a product‟s appearance that were chosen exclusively for the

purpose of designing a product that performed its function, as opposed to

features that were chosen, at least to some degree, for the purpose of

enhancing the product‟s visual appearance.

Lindner is persuasive and consistent with the approach taken by the ECJ in

Lego to a similar provision contained within trade mark legislation. However, it

is debatable whether the interpretation in Landor was indeed obiter and until

the approach in Lindner is endorsed by a higher court, the correct position, at

least as far as the UK is concerned, will remain unclear.

Vax argued that Dyson‟s design registration did not extend to the transparent

bin since the bin possessed the function of enabling the user to see when the

bin was full of dirt and thus needed emptying. Arnold J rejected this on the

basis of Lindner – it was not clear that transparency had been chosen for

purely functional reasons and not, at least to some degree, for the purpose of

enhancing the cleaner‟s visual appearance.

Designer freedom

That was not the end of the story, however. The scope of protection conferred

by a design right includes any design which does not produce a different

overall impression on the notional informed user (Article 9(1) Designs

Directive). In assessing the scope of protection, the degree of freedom of the

Lindner is persuasive and

consistent with

the approach

taken by the ECJ

in Lego

Intellectual Property News Issue 71 7

designer in developing his design is taken into consideration (Article 9(2)).

The more the designer‟s freedom in developing an allegedly infringing design

is restricted, the more likely minor differences between the designs at issue

will be sufficient to produce a different overall impression on the informed

user and thus preclude a finding of infringement (Case T-9/07, Grupo Promer

Mon Graphic SA v OHIM, 18 March 2010).

The Court found that the Vax cleaner was a machine with a high technical

specification which imposed greater technical constraints and left the

designer a lesser degree of freedom than a low specification machine. Since

Vax‟s freedom in developing its cleaner was restricted, it was more likely that

minor differences between it and the registered design would be sufficient to

produce a different overall impression on the informed user. In conclusion, the

Court held that the informed user would not consider the similarities between

the two designs to be particularly significant and would instead notice many

differences between them, a number of which would be considered to be

significant. The Court thus held that the Vax cleaner did not infringe Dyson‟s

registered design.

By Alex Batteson, London

Patents: Art rock

In Schlumberger Holdings Limited v Electromagnetic Geoservices AS ([2010]

EWCA Civ 819, 28 July 2010) the Court of Appeal overturned the Patents

Court‟s decision to revoke the patent of the defendant, EMGS. The decision

provides a helpful clarification in respect of two important areas of patent law,

namely that (i) the person skilled in the art can differ when considering

sufficiency and obviousness issues; and (ii) “secondary” evidence can be of

real value when assessing obviousness.

An invention is considered to involve an inventive step if it is not obvious to a

notional person skilled in the art. Further, a patent must disclose its invention

clearly and completely enough for it to be performed by a person skilled in the

art. The “skilled person” may in fact be a notional team of people with different

skills.

EMGS is the owner of a patent directed to hydrocarbon (e.g. oil and gas)

exploration techniques. Prior to the patent, seismic techniques were widely

used to locate hydrocarbon reservoirs within sub-sea rock formations. While

these techniques could reveal the size and shape of the reservoirs, they

could not determine whether they held valuable hydrocarbons or merely

water or brine. For that, it was necessary to drill expensive exploration wells.

The patent relates to the use of controlled source electromagnetic surveying

(“CSEM”) on reservoirs identified using seismic techniques, to determine

whether they contain hydrocarbons.

the Vax cleaner

was a machine

with a high

technical

specification

which imposed

greater

technical

constraints

Intellectual Property News Issue 71 8

The skilled team

At the filing date of the patent, the scientists faced with the task of locating

sub-sea hydrocarbon reservoirs comprised exploration geophysicists. These

geophysicists had only a vague knowledge of CSEM and no apparent use for

it. On the other hand, only a very small group of academic geophysicists had

expertise in CSEM. It was accepted that, for the purposes of performing the

invention, the skilled team of exploration geophysicists necessarily included

CSEM experts. The issue was whether the same skilled team was relevant

for assessing obviousness.

Jacob LJ held that the skilled team could differ for obviousness and

sufficiency purposes. He dismissed Schlumberger‟s submission that because

the European Patent Convention (and the Patents Act 1977) used the same

phrase (“person skilled in the art”) in relation to sufficiency and obviousness,

it must have the same meaning in relation to both. He held that it was wrong

to think that the art was necessarily the same both before the invention was

made (when obviousness was considered) and after (for the purposes of

sufficiency) since some inventions were “art changing”.

Jacob LJ considered two separate questions to assess whether CSEM was

an obvious solution to the problem of characterising reservoirs. First, would

the notional exploration geophysicist, having read the art, appreciate that

there was a solvable problem and see that CSEM was the answer or at least

had a sufficient prospect of success to merit seeking the views of a CSEM

expert? Second, would the CSEM expert know of the exploration

geophysicist‟s problem and appreciate that CSEM had a real prospect of

solving it? Jacob LJ answered “no” to both questions and held that, because

there had been a non-obvious marriage of skills, the invention involved an

inventive step. It was therefore unnecessary to go further and ask whether a

combined skilled team would see CSEM as providing a solution.

Secondary evidence

The case also involved a considerable amount of secondary evidence, such

as contemporaneous letters and emails from experts showing their

excitement upon first learning of the invention. The trial judge treated this

evidence with scepticism, in line with cases such as Nichia Corporation v

Argos Limited ([2007] EWCA Civ 741; reported in IP News, September 2007).

Jacob LJ, however, rejected the judge‟s approach on the basis that the

contemporaneous reactions of real experts in the field would not have been

tailored or selected for the trial and were always of real value when assessing

obviousness. He considered it particularly telling that Schlumberger (one of

the largest oil exploration companies) had not explained why CSEM had not

been thought of as a solution earlier.

The case is in line with the recent pro-patentee approach of the English

courts. Jacob LJ‟s helpful clarification of the composition of the skilled team

will likely be relevant only to similar “art changing” patents – in most cases the

person skilled in the art will be the same for obviousness and insufficiency

some inventions

were “art

changing”

Intellectual Property News Issue 71 9

purposes. However, his endorsement of secondary evidence as being of

potentially “real value” is likely to be relied on more generally by parties when

preparing cases and may lead to the need for careful case management in

order to avoid disproportionate volumes of secondary evidence being relied

on.

By Dennis Schubauer, London

Trade marks: Sun down

The need for brand owners to consider their options carefully before seeking

summary judgment against parallel grey goods importers who raise

competition defences has been highlighted once again by a recent decision of

the Court of Appeal (Oracle America, Inc formerly Sun Microsystems, Inc v M-

Tech Data Limited [2010] EWCA Civ 997, 24 August 2010).

Sun Microsystems sued M-Tech for infringement of its “Sun” trade mark for

computer equipment on the basis of M-Tech‟s importation into the UK of Sun

disk drives which it had obtained from a broker in the US. Sun applied for

summary judgment, which M-Tech sought to resist on the following grounds

(so far as they remained relevant on appeal):

> Sun deliberately failed to make publicly available serial mark trackers

that would enable independent resellers to identify whether drives had

been placed on the EEA market by Sun or with its consent. At the same

time it aggressively pursued unlicensed resellers for infringement. Thus

independent resellers were deterred from dealing in Sun drives since

they could not know whether they had been first marketed in the EEA

with Sun‟s consent. This was contrary to the free movement rules

under Articles 34 and 36 of the Treaty on the Functioning of the EU

(“TFEU”). Article 34 TFEU provides that quantitative restrictions on

imports and all measures having equivalent effect shall be prohibited

between Member States. Article 36 TFEU provides in essence that

Article 34 shall not preclude restrictions on imports justified on grounds

of the protection of intellectual property, provided that such restrictions

do not constitute a means of arbitrary discrimination or disguised

restriction on trade between Member States.

> Sun‟s agreements with its authorised distributors required that they buy

new and second-hand equipment from within Sun‟s authorised network

whenever possible. This had resulted in the artificial partitioning of the

second-hand Sun equipment market contrary to Article 101 TFEU.

A complete code?

Kitchen J rejected the defences and granted Sun‟s summary judgment

application. In his view, the ECJ had established that the Trade Marks

Directive (2008/95/EC) (“TMD”) embodied a complete harmonisation of the

rules relating to the rights conferred by a registered trade mark; there was

nothing to suggest that additional reference needed to be made to Articles 34

and 36 TFEU. Further, there was no nexus between the alleged breach of

Article 101 TFEU and M-Tech‟s infringement.

The need for

brand owners to

consider their

options

carefully before

seeking summary

judgment against

parallel grey

goods importers

who raise

competition

defences has

been highlighted

once again

Intellectual Property News Issue 71 10

The Court of Appeal allowed M-Tech‟s appeal. There was a real prospect that

M-Tech would establish at trial that the TMD must be interpreted by reference

to Articles 34 and 36 TFEU. It was arguable that the TMD represented a

complete code only to the extent that it precluded Member States from

legislating on matters that had been harmonised by the Directive. It was also

arguable that a breach of Article 34 would be established that could not be

justified under Article 36 TFEU or Article 7 TMD (in the sense that Sun‟s trade

marks rights had not been exhausted): Sun‟s alleged practices arguably had

more to do with restricting imports with the object of protecting its profit

margins than with the right conferred by the TMD to control the first marketing

of its products. While M-Tech‟s complaints might ultimately sound in

competition rather than trade mark law, the space between the two sets of

rights was not necessarily exclusively populated by the one or the other.

Abuse of rights?

An additional ground of appeal that Sun‟s conduct amounted to an abuse of

the rights conferred by a registered trade mark (under Article 5 TMD) was

also arguable. While the abuse of rights doctrine (derived from the VAT case

Halifax v HMRC [2006] STC 919) was merely another way of putting M-

Tech‟s Article 34/36 defence, it was a developing area of EU law, the

application of which was fact-sensitive. It might provide another way of

locating M-Tech‟s complaints within the TMD.

Finally, it was arguable that M-Tech‟s allegation that Sun‟s distribution

agreements formed part of an overall scheme for excluding secondary traders

from the market in breach of Article 101 TFEU was sufficiently closely

connected with the infringement claims to provide M-Tech with a defence (in

accordance with Sportswear Spa v Stonestyle Ltd [2007] FSR 33).

The Court of Appeal remitted the case to the High Court with an order that a

case management conference be held as soon as practicable bearing in mind

that a reference to the ECJ might be necessary. The decision provides an

admonitory lesson for brand owners seeking to enforce their rights that EU

competition defences may not easily be dismissed and that their boundaries

remain far from clear.

By Alex Batteson, London

Trade marks: Eye dilution

The claim of taking unfair advantage of the distinctive character or repute of a

trade mark is emerging as an effective tool for brand owners dealing with

infringers. In Specsavers International Healthcare Limited and ors v Asda

Stores Limited ([2010] EWHC 2035 (Ch)), the High Court rejected

Specsavers‟ claims that a logo and various straplines used by Asda on

posters and leaflets in its stores were confusingly similar to, or damaged the

distinctive character of, Specsavers‟ registered trade marks. However, the

Court found that use of the strapline “Be a real spec saver at Asda” on a

billboard did take unfair advantage of the Specsavers word mark.

Sun’s alleged

practices

arguably had

more to do with

restricting

imports with the

object of

protecting its

profit margins

Intellectual Property News Issue 71 11

In addition to the word mark, Specsavers owns the registration for the

following logo:

Asda used the logo below on posters in its stores:

It also displayed and distributed the following billboard and leaflet:

Intellectual Property News Issue 71 12

Living dangerously

Specsavers sued for trade mark infringement. In deciding whether Asda‟s

logo and straplines were likely to cause confusion with Specsavers‟ marks,

Mann J considered the relevance of evidence that Asda were „living

dangerously‟ in seeking to get as close as they could to Specsavers‟ marks.

He held that while such evidence was admissible, it was of limited relevance

given that likelihood of confusion was an objective test. However, it was of

greater value than survey evidence, since it was likely to be an assessment

by someone with “some expertise in the trade… who knows the market”.

Mann J distinguished two scenarios: evidence that a defendant that liked a

third party‟s mark, wanted something similar and looked for what they could

get away with was relevant to confusion; on the other hand, evidence that a

defendant wanted their own mark which might otherwise be thought to be

similar to a third party‟s mark and asked whether it was far away enough to

be safe was irrelevant.

On the facts, the judge found that it was the plan of Asda‟s design teams to

have a logo that at least resonated with Specsavers‟ logo. They started from

Specsavers‟ logo and went to what their lawyers told them was a safe

distance. Asda‟s conduct thus fell within the bracket of “living dangerously”

cases and was therefore supportive, if not conclusive, of a claim to confusion.

Overall, however, the judge held that the average consumer would not be

confused by the two logos. Similarly, the average consumer would read the

words “spec saver” in the billboard strapline in context as a play on words and

not an advertisement for Specsavers. The case against the second strapline

which used the words “spec savings” was even weaker.

Unfair advantage

As to whether Asda had taken unfair advantage of Specsavers‟ marks, the

judge interpreted the Court of Appeal in Whirlpool Corporation v Kenwood Ltd

(reported in IP News, October 2009) as having decided that in order to show

that unfair advantage had been taken, something more than mere advantage

- whether intention or some other factor - was required to demonstrate the

necessary element of unfairness. (This contrasts with Jacob LJ‟s obiter

dictum in L’Oréal v Bellure (reported in IP News, July 2010).) On the facts,

Asda had gained an advantage by, at the very least, using Specsavers‟

reputation for value as a reference point in its billboard strapline for its

intended message - you will get a better deal at Asda. Asda‟s intention here

made the advantage unfair.

However, while the judge felt that Asda‟s logo brought Specsavers‟ logo to

mind, thus creating the necessary link between them to support an unfair

advantage case as required by Intel v CPM (reported in IP News, January

2009), the link was insufficiently strong to indicate any unfairness despite the

fact that it might have been intended. The link arose from the shape of the

ovals only and was strongly countered by Asda‟s wording. The judge‟s

reasoning here appears to be consistent with that of the Court of Justice in

L’Oréal (reported as a Linklaters Hot Topic, June 2009) and the Court of

it was the plan

of Asda’s design

teams to have a

logo that at

least resonated

with Specsavers’

logo

Intellectual Property News Issue 71 13

Appeal in Whirlpool: the presence or absence of intention to take advantage

is merely a factor to be taken into account when considering liability.

Finally, the judge decided that Asda‟s marketing had not damaged

Specsavers‟ marks since there was no evidence that it had caused (or was

likely to cause) a change in the economic behaviour of the average consumer

of Specsavers‟ products or services (the test established by Intel). However,

the overall result is encouraging for brand owners since it highlights the

apparently low evidential threshold needed to establish liability in unfair

advantage in comparison with claims of likelihood of confusion or damage to

distinctive character or reputation.

By Alex Batteson, London

Intellectual Property News Issue 71 14

Editor: Alex Batteson

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Conference Papers and Publications

Marianne Schaffner and Romain Viret wrote an article entitled “Validity of a

„saisie-contrefacon‟ carried out after the expiry of the patent” for the Journal of

Intellectual Property Law & Practice.