24056 Scandecor Developments AB v Scandecor Marketing AV and Others

House of Lords (Nicholls, Steyn, Hobhouse, Woodborough, Millett, Scott of Foscote LJJ, 4 April 2001) Trade Marks Acts 1905, 1938; Trade Marks Directive 89/104, Arts 2, 12(2); Trade Marks Act 1994, ss9, 10, 11, 46 – use of group name Scandecor under licence agreement by one of original founding parties after group split up – whether infringement by continued use after expiry of agreement – acquired reputation during licence period – whether subsequent use by proprietor ‘liable to mislead’ – questions referred to ECJ re: (1) liability to mislead through ‘bare exclusive licence’under Art 12 – (2) meaning of ‘undertaking’under Art 2 – (3) whether a company an individual for own-name defence under s11 – (4) whether revocation mandatory or discretionary under s46 of 1994 Act

[Representation not quoted]