ITMA 322 APRIL 2005

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to detect weaknesses in his sales organization and thus combat parallel trade in his products, it is under the Treaty provisions on competition that those engaged in parallel trade should seek protection against action of the latter type.” The judge rejected defendants’ arguments and stated that if the defendants are right in saying that there is artificial partitioning of markets they may have good defences to the infringement actions under the Community law but those will be defences which have nothing to do with Article 81. The judge rightly observed that if they do not have any good defenses under Community law apart from Article 81, he failed to see how Article 81 gives them any. Accordingly, the judge rejected the arguments based on achieving the overall objection of Community competition law as a justification for the pleading relying on Article 81. The judge addressed the defendants’ arguments under the following heads: First, it is said that application and use of Garment Codes is contrary to Article 81 and gives rise to a claim that relief should not be granted, reliance being placed on British Leyland Motor Corporation Ltd v TI Silencers Ltd [1981] FSR 213 and Intel Corporation v Via Technologies Inc. Secondly, it is said that the instigation of litigation against third parties pursuant to a concerted practice (ie, an arrangement between the claimants) is itself contrary to Article 81 and can prevent a claim to equitable relief, reliance being placed on Glaxo Group Ltd v Dowelhurst Ltd [2000] EWHC 134 and Intel Corporation v Via Technologies Inc at first instance (Lawrence Collins J) [2002] EWHC (Ch) 1159. With respect to the first, the judge observed that the defendants did not plead in the original pleading or in the draft amended pleading that the use of garment codes were contrary to Article 81. Even if the use of garment codes is in breach of Article 81, there is no nexus between the enforcement of trade mark rights by the claimants and the breach of Article 81. The defendants had objected to Clause 13 of the Distribution Contract, as being restrictive of trading activities. It provides for the first claimant Sportswear to contribute a maximum specified sum per annum to allow Four Marketing Ltd (second claimant) to “investigate and deal with counterfeit and parallel issues”. It also provides for any brand protection activity which will involve legal costs to be sanc- The Institute of Trade Mark Attorneys, Canterbury House, 2-6 Sydenham Road, Croydon, Surrey CRO 9XE Tel 020 8686 2052. Fax 020 8680 5723. www.itma.org.uk © 2005 CASE COMMENTS tioned by the first claimant Sportswear. It provides that any “settlement whether derived by legal action or not will be split equally between the first claimant Sportswear and the second claimant Four Marketing Ltd. The judge agreed that in certain cases, commencement of trade mark infringement pursuant to a concerted practice could be a breach of Article 81. In such cases, the judge stated that there would be a real nexus between the breach of Article 81 and the defence to the infringement action. The judge stated that the defences have been brought pursuant to the agreement, but on reading of Clause 13, it is not the case since there is no obligation on either party to commence proceedings under the said agreement. Accordingly, the judge refused to allow the amendment to the defence. The judge therefore disposed of the application and observed as follows: “That is not enough to dispose of the application before me. However, I would add that, in the light of the first decision in Glaxo, I would take a great deal of persuading that there was more than a fanciful claim that the Claimants’ two actions constitute a breach of Article 81 even if the 2004 Distribution Agreement had contained a provision obliging the parties to commence trade mark infringement proceedings against the Defendant. As Laddie J explains, the breach of Article 81 is to be found in the co-operation between trade mark proprietors in bringing their actions. It does not follow that, even where there is such improper cooperation, the individual trade mark owners are deprived of the right to sue for infringement, the impact of an adverse finding being only to prevent traders acting in concert. This can, of course, given rise to difficulties in determining whether a trade mark owner is acting independently or in concert. But any relief granted would as Laddie J points out, have to be carefully worded to prevent the improper collaboration but without taking away the right to sue for infringement of trade mark.” The judge also stated that the decision about the nexus point is in accordance with the approach of Laddie J in Hewlett-Packard Development Company LP v Expansus UK (unreported 23 June 2005). The judge refused the defendants’ application to amend the defences and ordered that the defences be struck out. Remya Suresh, Ravindran Associates, Singapore, remya@ipravi.com 20 ITMA Review December 2005
People Alexander von Mühlendahl retires from OHIM During the weekend of 21 to 23 October trade mark experts from all over the world gathered in Alicante to say farewell to Alexander von Mühlendahl, who retired as Vice President of the OHIM on 31 October 2005. He is well known to ITMA members and, of the three principal officers of the OHIM who shaped its early years, he is the last to leave office (although in fact Alberto Cassado continues working at the Office but no longer as Second Vice President). Alex was unaware of the celebrations that had been planned for him during the weekend which commenced, on the Friday evening, with ‘Drinking, Tapas, and Dancing’ at a club in Alicante attended by about 150 people. On the Saturday all the ‘foreign’ guests joined Alex, Margot his wife, his son and daughter, his brother and sister as well as the 19 ‘pioneers’ who had joined the OHIM in those far-off heady days when it began its life in 1994 and their families, for a cruise to Tabarca island where we all enjoyed a splendid and lengthy Spanish lunch in warm sunshine. Returning home, we hardly had time to don our glad rags before setting out for a black tie dinner held in the Alicante Archaeological Museum. This has only recently been opened in the premises of a former hospital and it is well worth a visit. The dinner was held in the magnificent surroundings of the ex-chapel, now a library, under one of the biggest chandeliers to be seen outside Versailles. Alex had been told he was going to a small dinner party so his face, when he came through the door and was presented with a group of some 60 persons, was a picture to behold. But the best was yet to come, for unbeknownst to him, Verena von Bomhard (Lovells), Jochen Pachenberg (Bardehle Pagenberg Dost), and Detlef Schennen (OHIM) had spent the past 18 months or so organising a ‘Festschrift’ for Alex. There is no equivalent English word for this typically German institution, which is a specially published book presented, usually at retirement, to distin- guished persons. This particular volume (published by and available from Carl Heymans Verlag) contains contributions in Alex’s honour from 29 different well-known personalities from the world of trade marks, coming from ten different countries, the majority of whom were present at the dinner (including your correspondent). A copy of this book was presented to Alex who, once again, was overcome with surprise and delight. Generous speeches were made in his honour to which he responded equally generously. On the following day, the firm of Bardehle Pagenberg Dost hosted a brunch in Alex’s honour. The UK was represented at some or all of the festivities by Geoffrey Hobbs QC, Terry Johnson (Marks & Clerk) and the undersigned. But the farewells did not end there for, after the OAMI Users’ Group Meeting which had conveniently been arranged for the next day, the members of the various delegations to that meeting were joined in the massive hall of the Office at the Avenida de Europa by a large crowd of members of the OHIM staff for an emotional farewell to Alex. They all listened to a generous speech from Mr Wubbo de Boer, the President of the Office, who presented Alex with a picture painted by the artist wife of a member of the OHIM staff, and who announced that henceforth the library of the Office would be known as the von Mühlendahl Library. Generous tributes were then paid to Alex by representatives of several of the Users’ Groups. Alex’s reply was typically thought-provoking as well as generous to his many friends and colleagues. Thus, a great man retires from his official life, firstly at the German Ministry of Justice and subsequently at the OHIM. But not from our life. In the future he will act part-time as a consultant, based in Munich, and available for advice and opinions at the firm of Bardehle Pagenberg Dost. David Tatham, OBE, tatham@dsl.pipex.com The ITMA Advanced Trademark Law and Practice Course 2005-6 and 2006-7 Students should have received application forms for attendance on the ITMA Advanced Trade Mark Law and Practice Course for 2005-6 and 2006-7. Students are reminded that the deadline for receipt of applications for both courses is 19 December 2005. December 2005 ITMA Review 21
Page 1 and 2: Contents ITMA business Public Relat
Page 3 and 4: This note was written before the ev
Page 5 and 6: and the co-ordination of official b
Page 7 and 8: ITMA BUSINESS and Mrs Ramage gave a
Page 9 and 10: Features What’s in a Brand? Brand
Page 11 and 12: Design & Copyright The Costs of Cop
Page 13 and 14: would be off the hook in relation t
Page 15 and 16: Case comments On Your Bikes In the
Page 17 and 18: fully registered if there were an a
Page 19: Stone Island CASE COMMENTS Sportswe
Page 23 and 24: Proposed publication of tutorial ma

ITMA 322 APRIL 2005

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