This month’s IP and IT Briefing focuses on two important trade mark judgments: the UK Supreme Court’s ruling in Cartier International AG and others v British Telecommunications Plc and another  UKSC 28 and the EU Court of Justice decision in Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV C-163/16, ECLI:EU:C:2018:423.
The Cartier v BT case addresses who should bear the costs of orders to block access to websites selling counterfeit goods: the IP right owner or the intermediary? UK courts have granted website blocking orders against internet service providers (ISPs) in copyright cases since 2012 but Cartier was the first such case involving trade mark rights. At first instance, Arnold J held that the ISPs should bear the costs of implementing the orders, and a majority of the Court of Appeal upheld this ruling. However, the Supreme Court unanimously allowed the ISP’s appeal, and found that the trade mark owner should indemnify the ISPs in respect of their reasonable costs of processing and implementing the blocking orders. Lord Sumption wrote the opinion for a unanimous bench.
The Louboutin case at the CJEU concerned a Benelux trade mark for a high-heeled shoe with a red-coloured sole in Class 25 of the Nice Agreement, filed on 28 December 2009. Following a challenge to the mark’s validity, the District Court of The Hague referred a question to the CJEU, asking if the mark fell under the exclusion in Article 3(1)(e)(iii) of the old Trade Marks Directive (Directive (EU) 2008/95/EC) which states that ‘signs which consist exclusively of … the shape which gives substantial value to the goods’ shall not be registered or, if registered, shall be declared invalid.
In a short judgment, the CJEU found that the mark registered was not a shape as ‘shape’ means ‘a set of lines or contours that outline the product concerned’. The mark therefore did not fall under the Article 3(1)(e)(iii) exclusion.
In May, nearly 11,000 trade mark practitioners gathered at the INTA Annual Meeting in Seattle, United States. The programme included a review of European case law and a discussion of trends in colour combination trade marks, both of which are also summarised in this month’s Briefing.
The IP/IT Briefing is part of the Bloomsbury Law Online Service. The full briefing is available here.