Copyright Law

Pages50-55
50 Volume 18, July–September 2012 international law update
© 2012 Transnational Law Associates, LLC. All rights reserved. ISSN 1089-5450, ISSN 1943-1287 (on-line) | www.internationallawupdate.com
COPYRIGHT LAW
I     
       
 “B”    
U.S. C   C C
    
   ,   
  E C  J, 
E C  A (C D)
  E  E
U      
     E 
       
     E
     
   
[Sir Robin Jacob: (giving the rst judgment at
the invitation of Ward L.J.)]
1. “By our judgment of 20th October 2009,
[2009] EWCA Civ 1022, we decided to refer to
the Court of Justice of the European Union (the
CJEU) some questions of trade mark law: the
answers would be necessary to resolve this appeal.
It is from the decision of Norris J of 19th February
2008 dismissing BB’s (as I shall call the appellants)
appeal from the decision of 2nd August 2007 of
the Hearing Ocer, Mr Foley, in the Trade Mark
Registry.
2. “e general facts and background to the
appeal are already set out in our rst judgment ….
In the rst judgment we resolved certain English law
defences (abuse of process, estoppel) against BB. No
more need be said about them.”
3. “BB also raised a defence of acquiescence
under Art. 9(1) of the Directive. is raised two
questions of law for the CJEU. BB accepts that the
response from the CJEU rules out any defence of
acquiescence. So no more need be said about that.”
4. But we had a third question. It was this: In
Council Directive 89/104/EEC: 3. Does Art 4(1)(a)
apply so as to enable the proprietor of an earlier mark
to prevail even where there has been a long period of
honest concurrent use of two identical trade marks
for identical goods so that the guarantee of origin of
the earlier mark does not mean the mark signies
the goods of the proprietor of the earlier and none
other but instead signies his goods or the goods of
the other user?”
5. “e CJEU ruled that Article 4(1)(a) of
Directive 89/104 must be interpreted as meaning
that the proprietor of an earlier trade mark cannot
obtain the cancellation of an identical later trade
mark designating identical goods where there has
been a long period of honest concurrent use of those
two trade marks where, in circumstances such as
those in the main proceedings, that use neither has
nor is liable to have an adverse eect on the essential
function of the trade mark which is to guarantee to
consumers the origin of the goods or services.”
6. “Mr Mellor QC submits that answer to the
case is now clear. It is that where a long-standing
situation of honest concurrent user of the same mark
for the same goods has come about, each user can
register its mark, each can stop third parties from
using it, but that neither can stop the other. e state
of honest concurrent use means that the essential
function of the parties’ trade marks is not regarded as
having adverse eect. True it is that there will always
be some confusion, but that does not matter. It is
also true that cases of honest concurrent use are rare,
but this is such a case.”
7. “Mr Bloch QC for AB submits: (a) e honest
concurrent use point is not open for BB to take on
appeal; (b) If it can be taken, then on the basis of
ndings of fact in the earlier litigation between the
parties, he can demonstrate an ‘adverse eect’; (c) If
that be not so, then it would be unfair and unjust to
resolve the appeal against AB because AB never had
an opportunity of proving an adverse eect. Instead
we should remit the case back to the Trade Marks
Registry so that the issue of ‘adverse eect can be
properly investigated by way of further evidence.”
Is it open for BB to take the point on appeal?
8. “I see nothing unfair about allowing the
point to be taken on appeal to this court. It is
simply a point of law which is taken on the basis
of the evidence before the Hearing Ocer. ere
is generally no unfairness in the Court of Appeal
considering whether on the facts a case has been
made out as a matter of law, even if the point is
raised for the rst time in that court. ings are of
course dierent if the point also involves questions
of fact which require further evidence.”
“It is perhaps worth observing that the great
‘honest concurrent use’ case, GE itself, involved two

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT