Recent cases show the importance of being in possession of all the relevant facts and carrying out thorough research before making a trade mark application or taking action to protect your intellectual property rights.
In the first, the EU General Court concluded that the visual and phonetic similarity of the marks ELMA and ELNEX was sufficient to cause confusion between the two.
Although the goods concerned appeared in different Nice classes for registration purposes, the Court found that because they were likely to be distributed in the same distribution channels and could be considered to be 'highly similar', the different word ending was not sufficient to counterbalance the similarity.
The result was a refusal of the ELMA trade mark application.
The second case concerned a claim of alleged copyright infringement in relation to linens and infringement of a registered design in relation to packaging. The claim relating to the linens was rejected by the High Court when it was discovered that the allegedly infringing designs had been imported into the UK prior to the creation of the claimant's designs.
The claim relating to the packaging suffered a similar fate, the defendants citing 'prior use' of the design before it had been registered. The result was that the Court found that the claimant's registered design right was invalid.