Articles, News And Events
- 06 December 2017
Coty Germany GmbH v Parfümerie Akzente GmbH - CJEU decides that preserving luxury image of products in selective distribution agreements is not contrary to competition law
Coty Germany GmbH v Parfümerie Akzente GmbH CJEU decides that preserving luxury image of products in selective distribution agreements is not contrary to competition lawThe Oberlandesgericht Frankfurt am Main (the Higher Regional Court) asked the CJEU whether a contractual clause, which prevented the sale of luxury products by authorised distributors on third-party online platforms, was lawful under competition law. The CJEU decided that such a clause is lawful. Case Background In this case,... - 30 November 2017
Red Bull colour mark registrations declared invalid because they are not sufficiently precise
Red Bull GmbH v EUIPO This is an appeal decision in respect of two EUIPO First Board of Appeal decisions relating to invalidity proceedings between Red Bull and Optimum Mark. The case is about two EU trade mark registrations for energy drinks for the colour combination blue and grey and their respective descriptions.The General Court has held that neither of these registrations are valid. Distinctiveness was not strictly the issue, because both passed examination having convinced the EUIPO... - 03 August 2017
UK Supreme Court confirms sale of grey market goods capable of criminal prosecution under s.92 TMA 1994
UK Supreme Court confirms sale of grey market goods capable of criminal prosecution under s.92 TMA 1994 R v M and Others [2017] UKSC 58 UK Supreme Court confirms sale of grey market goods capable of criminal prosecution under s.92 TMA 1994 This decision was an interlocutory appeal in criminal proceedings which concerns the correct construction of section 92(1) of the Trade Marks Act 1994 (‘TMA’). The appellants are a limited company and two individuals connected with its management. They have... - 29 June 2017
BREXIT & INTELLECTUAL PROPERTY – THE KEY POINTS
A view by Palmer Biggs IP, Solicitors Current position Article 50 triggered on 29 March 2017, setting a cut-off date of 29 March 2019 for the UK to leave the EU. Snap election on 8 June 2017 failed to strengthen the UK government’s mandate and instead resulted in a hung Parliament (with no party having an absolute majority), leading to suggestions that a “soft” Brexit, where the UK remains in the single market or the accepts the free movement of people, is now more of a possibility than a... - 21 June 2017
Use of BMW in a trading name (including as a social media handle) infringes BMW’s trade mark rights and is Passing Off
Use of BMW in a trading name (including as a social media handle) infringes BMW’s trade mark rights and is Passing Off In a judgment handed down today by the Court of Appeal it has been made clear that Technosport London Limited and its sole director George Agyeton in their business as car repairers infringed BMW trade mark rights in the BMW word mark by using the trading name ‘Technosport BMW’ and this use also amounted to passing off. This trading name had been used as a Twitter handle, on... - 14 June 2017
Online sharing platforms such as The Pirate Bay communicate copyright protected works to the public
Stichting Brein v Ziggo BV & X4ALL Internet BV (Case C-610/15) In its decision in Stichting Brein v Ziggo BV & X4ALL Internet BV (Case C-610/15) the CJEU has ruled that the operators of the online sharing platform ‘The Pirate Bay’ communicate works to the public by making available, indexing and managing content which infringes copyright. As a result, rightholders may apply for an injunction against intermediaries (such as internet service providers) whose services are used to commit such... - 17 May 2017
Court of Appeal Decision a Set Back for Nestle’s 3D KitKat Trade Mark Applications
Societe des Produits Nestle SA v Cadbury UK Limited This UK Court of Appeal case is an appeal by Société des Produits Nestlé S.A. (“Nestlé”) from the judgment of Arnold J given in January 2016 and his consequential order dismissing its appeal against the decision of Mr Allan James, the hearing officer acting for the Registrar of Trade Marks, made in 2013. This appeal concerns an application made by Nestlé in July 2010 to register as a UK trade mark the 3D sign shown below (the “3D Mark”) in... - 09 May 2017
Court provides guidance on how to achieve shorter trials in registered design cases in the UK
COURT PROVIDES GUIDANCE ON HOW TO ACHIEVE SHORTER TRIALS IN REGISTERED DESIGN CASES IN THE UK At a case management conference during the case of Spin Master Limited v PMS International Group [2017] EWHC 1477 (Pat), Mr Justice Carr highlighted steps to be considered in order to achieve shorter trials in registered design cases. Case Background The Claimant has a Community registered design (002614669-0002) for a product known as “Bunchems”. This is a construction toy for children: The Defendant has... - 24 March 2017
High end restaurant succeeds in trade mark claim against copycat dog food company
Azumi Ltd v (1) Zuma's Choice Pet Products Ltd & (2) Ms Zoe Vanderbilt [2017] EWHC 609 Azumi Limited is a company which runs various high-end Japanese restaurants across the world including a restaurant called ZUMA in London. Azumi holds three trade marks (UK and EU) for the word ZUMA and the figurative ZUMA mark (the ‘Marks’). Zuma’s Choice Pet Products Ltd is a company set up by the second defendant Ms Vanderbilt for the purpose of selling high end pet food. The company was named after Ms... - 13 March 2017
ISPs ordered to block access to streaming servers at the time of Premier League games
The Football Association Premier League ('FAPL') v (1) BT; (2) EE; (3) Plusnet; (4) Sky; (5) TalkTalk; and (6) Virgin Media [2017] EWHC 480 (Ch) In FAPL v BT, EE, Plusnet, Sky, TalkTalk and Virgin Media [2017] EWHC 480 (Ch) the High Court has granted an order against the leading retail internet service providers (ISPs) blocking access to streaming servers transmitting content which infringes copyright owned by the Premier League. Whil st previous s.97A CDPA 1988 cases have tended to concern the... - 22 February 2017
The owners of CRISTAL champagne are awarded over a million Euros for sales of infringing CRISTALINO cava.
Champagne Louis Roederer - v - J Garcia Carrion S.A., Asda Stores Limited, WM Morrison Supermarkets PLC [2017] EWHC 289 (Ch) In 2015, a decision handed down by Mrs Justice Rose held that J Garcia Carrion (‘JGC’) had infringed Champagne Louis Roederer’s (‘CLR’) UK and Community Trade Marks (now European Trade Mark) and held that JGC’s UK and CTM registrations in the UK for CRISTIALINO JAUME SERRA were invalid. CLR’s flagship champagne CRISTAL is renowned for its exclusivity and being enjoyed by... - 15 February 2017
High Court rules argos.com in conjunction with use of Google ads does not amount to trade mark infringement or passing off
Argos Limited v Argos Systems Inc [2017] EWHC 231 (Ch) Argos Limited (‘Argos UK’) brought court proceedings against Argos Systems Inc (‘Argos US’) an American company specialising in CAD systems for the design and construction of residential and commercial properties, for trade mark infringement and passing off based on Argos US’s use of the trade mark ARGOS in the domain name in conjunction with some advertisements placed on their website via the Google Ad Sense program. Argos US secured the... - 14 February 2017
Court of Appeal says an immediate custodial sentence is likely to be appropriate for criminal copyright offences
R v Evans [2017] EWCA Crim 139 In its decision in R v Evans [2017] EWCA Crim 139 the court of appeal has determined the appropriate level of sentence for offences of distributing articles infringing copyright which is a criminal offence under s.107(1)(e) of the Copyright Designs and Patents Act 1988 (‘CDPA’). Such an offence carries a maximum 10 year custodial sentence. Mr Evans had been served with cease and desist notices which made clear he was at risk of prosecution, however these were... - 18 January 2017
Right-holder’s permission needed to resell back-up copies of software even where original damaged, destroyed or lost
In its decision in Aleksandrs Ranks & Jurijs Vasilevics v Microsoft Corp (Case C-166/15) the European Court of Justice (the ‘CJEU’) has ruled that Article 4(2) and Articles 5(1) and (2) of Directive 2009/24/EC (the ‘Software Directive’) should be interpreted to mean that back-up copies of software cannot be sold without the right-holder’s permission, even where the original copy of that software has been damaged, destroyed or lost. By its narrow interpretation of the right to create a backup... - 22 December 2016
Goodwill in a solicitor’s name will usually vest in the firm
Juthika Bhayani & Bhayani Law Limited v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC)[2016] EWHC 3360 (IPEC) This case involves allegations of passing off against the Defendant relating to its use of the sub-brand “Bhayani Bracewell” and a revocation action against the Defendant’s “BHAYANI BRACEWELL” trade mark. The action was brought in the High Court in January 2016 and transferred to the IPEC in that same month. This decision relates to a summary judgment hearing, where applications for summary... - 21 December 2016
French jurisdiction covers overseas websites selling to French consumers where French courts are seized of a selective distribution dispute
Concurrence SARL v (1) Samsung Electronics France SAS; and (2) Amazon Services Europe Sarl (Case C-618/15) In its decision in Concurrence SARL v (1) Samsung Electronics France SAS; and (2) Amazon Services Europe Sarl (Case C-618/15) the CJEU found ‘special jurisdiction’ under Article 5(3) of the Brussels Regulation for the courts of France to hear an action for infringement of the terms of a selective distribution agreement by virtue of websites, accessible in France but operated in other... - 15 December 2016
Territories Cannot be Merged When Assessing Acquiring Distinctiveness in the EU
Mondelez UK Holdings & Services v EUIPO (T-112/13) This trade mark decision of the General Court is the latest in a long line of cases regarding the 3D KitKat EU trade mark (see below), which began in 2006 when Mondelez (formerly Cadbury) opposed the mark’s registration at the EUIPO (or OHIM as it was then). Nestlé, who is the intervener in this case, first applied for the above mark in 2002. Mondelez has opposed the registration of this mark in respect of all of the goods originally applied... - 07 December 2016
Guidance for bringing unregistered design claims in IPEC cases
ACTION STORAGE SYSTEMS LIMITED V G-FORCE EUROPE.COM LIMITED AND FLETCHER EUROPEAN CONTAINERS LIMITED [2016] EWHC 3151 (IPEC) This case relates to the alleged infringement of the Claimant’s UK unregistered design rights in its school lockers called “eXtreme lockers”. The First Defendant was established in 2013. The Second Defendant was established in 1994. Its principal business is the manufacture of moulded plastic containers which it sells largely to the food industry. The Defendants share the... - 06 December 2016
UNJUSTIFIED THREATS: A ‘threat’ must concern UK infringement proceedings to be actionable
Nvidia Group Companies v Hardware Labs Performance Systems Inc. [2016] EWHC 3135 (Ch) In Nvidia Corporation & Others v Hardware Labs Performance Systems Inc. the High Court has granted a defendant’s application for summary judgment by ruling that, to be actionable, a ‘threat’ must be a threat of trade mark infringement proceedings in the UK. However, applications for the stay, transfer and/or reallocation of proceedings were refused by Mr Justice Mann. Summary judgment and unjustified threats The... - 30 November 2016
IPEC - Caps on costs and damages can be waived where a Claimant beats its Part 36 offer at trial. Additional Damages also awarded.
PHONOGRAPHIC PERFORMANCE LIMITED V RAYMOND HAGAN; (2) EDWARD HAGAN; & (3) GERARD BYRNE [2016] EWHC 3076 (IPEC) In Phonographic Performance Limited (‘PPL’) v (1) Raymond Hagan; (2) Edward Hagan; & (3) Gerard Byrne the Intellectual Property Enterprise Court (‘IPEC’) has ruled that the prescribed caps on costs and damages may be exceeded where a Claimant has obtained a result at trial which is at least as advantageous as a Part 36 offer made earlier in the proceedings. In this case, which... - 18 November 2016
Co-existing parties and the infringing use of internet keyword advertising
Victoria Plumb Limited v Victorian Plumbing Limited, Mark Radcliffe and Coral Phones Limited [2016] EWHC 2911 (Ch) This case involves allegations of trade mark infringement and passing off by the Claimant against the First Defendant’s use of the Claimant’s marks as online advertising keywords. There was a defence of honest concurrent use of the Claimant’s marks. It is worth noting that the Defendants also raised acquiescence and estoppel defences, in the alternative, should their honest... - 01 November 2016
Court of Appeal confirms sale of grey goods can be criminal offence under s.92 TMA 1994
R v C and Others [2016] EWCA 1617 Background C, a limited liability company and other individuals, were unlawfully selling branded shoes and clothing into the UK which were manufactured in countries outside the EU. Some of these branded goods were goods which were not manufactured either by the trade mark proprietor itself or by factories authorised by them (counterfeit goods). In addition, there was a significant quantity of goods which were manufactured by authorised factories, but were... - 01 November 2016
SELLING GREY GOODS CAN BE A CRIMINAL OFFENCE
SELLING GREY GOODS CAN BE A CRIMINAL OFFENCE In its decision in R v C and Others [2016] EWCA Crim 1617, the Court of Appeal has ruled that it can be a criminal offence to sell “grey goods” without the consent of a trade mark proprietor. “Grey goods” can be defined as items to which the relevant trade mark proprietor has consented to the application of its trade mark, but not the subsequent sale or distribution of the goods. Quite often these goods leave authorised factories through a ‘side... - 20 October 2016
Copyright in chairs not restored despite incompatibility with the Berne Convention
MONTIS DESIGN BV V GOOSSENS MEUBELEN BV CASE C-169/15 This case involves a CJEU preliminary ruling on the effect of national laws, which reduce and/or extinguish the terms of protection for copyright, which are not compatible with EU laws such as the EU Term Directive and/or international agreements that have an effect on EU member states such as the TRIPS Agreement and the Berne Convention. In 1983, Mr. Gerard van den Berg designed two chairs he named ‘Charly’ and ‘Chaplin’: “Charly” chair model “Chaplin”... - 18 October 2016
IPEC – Inconsistent findings on jurisdiction for passing off and UK TM infringement v. EU TM infringement leads to appeal
AMS NEVE AND ORS V HERITAGE AUDIO AND ANOR [2016] EWHC 2563 (IPEC) In AMS Neve & Others v Heritage Audio & Another the Intellectual Property Enterprise Court has ruled that the English courts have jurisdiction to hear claims for UK trade mark infringement and passing off against Spanish defendants selling goods under similar marks online. However, because the decisions about the content of the Defendants’ website were made in Spain, it was held that there was no jurisdiction to hear the claim... - 11 October 2016
Passing off claim fails as goodwill could not be established in the shape and get-up of a product used with a distinctive brand name
GEORGE EAST HOUSEWARES LIMITED V (1) FACKELMANN GMBH & CO KG (2) PROBUS CREATIVE HOUSEWARES LIMITED [2016] EWHC 2476 The Claimant and its predecessors have made and sold conical measuring cups in the UK since 1934. The Defendants manufacture/ import kitchen products into the UK. In 2013 the Claimant found the Defendants displaying measuring cups similar to the Claimant’s “Tala Cook’s Measure” measuring cup at the Birmingham trade fair. The Claimant contacted the Defendants complaining about the... - 06 October 2016
Flynn Pharma Ltd v Drugsrus Ltd and Tenolol Ltd
The High Court has held that the rebranding of an imported epilepsy drug (sold as “Epanutin” in the exporting Member State) using the Claimant’s “FLYNN” word mark constituted trade mark infringement because the imported product had not been put on the market in the exporting Member State by the Claimant or with its consent. The Defendants sought to argue that: (a) their use of the “FLYNN” word mark was not trade mark use as it was only to be used as a description of the goods; and (b) The... - 30 September 2016
Ecolab USA, Inc v OHIM Case T‑610/13
This case concerns a refusal of a EUTM on grounds that the word mark GREASECUTTER applied for by Ecolab was too descriptive and consequently lacked distinctive character. The General Court ruled that the Board of Appeal were correct that the mark GREASECUTTER conveys to the relevant public in this case, professionals and average consumers, that the goods covered by the mark are goods which cut (dissolve) or reduce animal fat or greasiness so is directly descriptive of their nature, properties... - 15 September 2016
CJEU rules on liability of service providers providing access to free Wi-Fi in relation to copyright infringement
TOBIAS MCFADDEN V SONY MUSIC ENTERTAINMENT GERMANY GMBH C-484/14 The Court of Justice of the European Union (‘CJEU’) gave a ruling on whether and to what extent a business providing free Wi-Fi to their customers can be held liable for copyright infringement which was committed by their customers using the free Wi-Fi provided. Mr McFadden runs a lighting and sound system shop in which he offers access to a WI-FI network to the general public free of charge. Access to that network was... - 08 September 2016
Linking to protected works already freely available online, but without the consent of the copyright owner can be copyright infringement in a commercial context
GS MEDIA BV V SANOMA MEDIA NETHERLANDS BV; PLAYBOY ENTERPRISES INTERNATIONAL INC.; AND BRITT DEKKER (CASE C-160/15) The CJEU has ruled that, posting hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, will not constitute a ‘communication to the public’ within the meaning of Article 3(1) of InfoSoc Directive (2001/29), as long as the links are provided without the pursuit of financial gain by a person who did not know or... - 24 August 2016
Brexit and your IP
The message following the EU referendum result in the UK is simple: it is business as usual and there will be no immediate changes. UK national rights will not be affected and European Union trade marks and designs (EUTMs and RCDs) will continue to cover the UK for the time being. It is likely that EUTMs and RCDs will cease to have effect in this country once the UK actually leaves the EU but, if this is the case, it is expected that arrangements will be made for the existing protection to... - 11 August 2016
Court decides if account of profits is a money claim and if correct court fee has been paid
LIFESTYLES EQUITIES CV & ANOR V SPORTSDIRECT.COM LIMITED RETAIL LTD & ORD [2016] EWHC 2092 (CH) The issue in this case was whether the claimants had paid the correct court fee when issuing their claim against the defendants. For a claim for damages (i.e. to “recover a sum of money”) over £200,000, the current fee payable at issue would be £10,000 (5% of the damages claimed). Plus, if there is a claim for an injunction (i.e. a “non-monetary claim”) it would currently cost £528 to issue in the High... - 01 August 2016
The Repeal of Section 52 of the Copyright, Designs and Patents Act 1988
The Main Effect of the Repeal Section 52 of the Copyright, Designs and Patents Act 1988 (‘CDPA’) was a legal provision that dealt with artistic works that have been applied to an article (e.g. a logo that is an artistic work which is applied to a t-shirt) and where more than 50 copies of that artistic work on articles have been produced. This provision limited copyright protection for these artistic works as applied to articles to 25 years from the date they were first marketed. On 28 July... - 28 July 2016
Flat-rate costs recovery schemes must allow a successful party to recover a “significant and appropriate part” of their legal costs
UNITED VIDEO PROPERTIES INC. V TELENET NV (CASE C-57/15) The Court of Justice of the European Union (‘CJEU’) has ruled that Article 14 of the Enforcement Directive (2004/48/EC) does not preclude national legislation which provides only for a flat-rate reimbursement of legal costs to a successful party; however, such legislation must allow a successful party to recover, at the very least, a “significant and appropriate part” of their reasonable legal costs actually incurred. This decision could... - 20 July 2016
Cartier, Montblanc, Richemont International SA v BskyB, EE, TalkTalk and Virgin [2016] EWCA Civ 6358
The Court of Appeal has upheld the High Court’s decision in Cartier, Montblanc and Richemont v BskyB, BT, TalkTalk, EE and Virgin confirming that it is possible for trade mark owners to obtain orders against ISPs requiring them to block access to websites on which infringing articles are advertised and sold. In his leading judgment, Kitchin LJ agreed with Arnold J and said that the UK courts had jurisdiction to make such an order by virtue of s.37(1) of the Supreme Courts Act and Article 11 of... - 07 July 2016
Tommy Hilfiger Licensing LLC & Others v Delta Center a.s. - Case C-494/15
This judgement, which extends the decision in L’Oreal v eBay relating to online marketplaces, held that under the third sentence of Article 11 of the Directive 2004/48/EC (‘Enforcement Directive’), operators of physical marketplaces, who sublet pitches to market-traders, may be forced to stop concluding contracts with market-traders selling counterfeit goods on their pitches to prevent new infringements of intellectual property rights by the market-traders. dispute Delta Center a.s. is the... - 05 July 2016
Future Enterprises Ltd v European Union Intellectual Property Office (EUIPO) Case T-518/13
This case demonstrates the scope of protection available to registered brand owners who may be able to prevent others using similar names, including certain prefixes used within a family of trade marks, if the relevant consumers are likely to establish a link between the marks. Future Enterprises registered the word mark MACCOFFEE in classes 29, 30 and 32. McDonalds International Property did not oppose the mark and the application was successfully registered. In 2013 McDonalds applied for... - 22 June 2016
What is “reasonable compensation” for infringement of pending EU Trade Marks?
IRINA NIKOLAJEVA V MULTI PROTECT OÜ C-280/15 This case concerns a reference to the CJEU from the Estonian Harju District Court about the interpretation of Articles 9(3) (now replaced by Article 9b) and 102(1) of Regulation (EC) No 207/2009 (the ‘TM Regulation’). Ms Nikolajeva is the proprietor of the EU trade mark “HolzProf” which has been licenced to a 3rd party since the date the trade mark application was filed. The “HolzProf” application was filed on 24 April 2010 and the application was published... - 13 June 2016
Court confirms it does not have jurisdiction to reverse DRS decisions per se
MICHAEL ROSS V PLAYBOY ENTERPRISES INTERNATIONAL, INC. [2016] EWHC 1379 (IPEC) In August 2014 Mr Ross registered the domain name playboy.london (“Domain Name”). Playboy Enterprises International, Inc. (PEI), the internationally renowned publisher of the Playboy magazine and owner of the word mark “Playboy” in multiple countries wrote to Mr Ross in October 2014 complaining about his registration and requesting that Mr Ross transfer the domain name immediately. Mr Ross declined and subsequently... - 08 June 2016
A Look at Declarations of Non-Infringement in the Skyscape & Karen Millen cases
(1) Skyscape Cloud Computing Limited v Sky Plc, Sky (UK) Limited and Sky International AG [2016] EWHC1340 (IPEC) (2) Karen Denise Millen v Karen Millen Fashion Limited and Mosaic Fashions US Limited [2016] EWHC 2104 (Ch) Both of these cases were primarily concerned with applications for declarations of non-infringement (‘DNIs’). Skyscape v Sky In Skyscape v Sky (the ‘Skyscape case’), Skyscape applied for a wide ranging DNI relating to a large number of its word and logo marks in connection... - 31 May 2016
The meaning of ‘communication to the public’ checks into rehab
REHA TRAINING V GEMA – CASE C-117/15 In its decision in Reha Training v GEMA the CJEU has ruled that the making available of TV programmes in waiting rooms and a training room within a rehabilitation centre constitutes a communication to the public, requiring the proprietor (‘Reha Training’) to pay royalties to GEMA (a company entrusted with collective management of copyright in the musical sector in Germany). In a reference which came from the national courts of Germany, the CJEU was first... - 24 May 2016
Designs versus Trade Marks - Su-Shan Chen v AM Denmark A/S
A recent decision from the General Court illustrates the interface between designs and trade marks. By way of background, the regulation governing registered Community designs says that a design may be invalidated if the design uses a distinctive sign and the relevant Community or national law law allows the owner of the sign to prohibit this use. Put simply, if a design includes someone else's trade mark, the owner of that trade mark may be able to invalidate the design. This case shows the... - 23 March 2016
First Appointed Person decision for designs comments on comparisons with prior art
Erol v Javaid (Appeal 0/253/17) 18 May 2017: The first Registered Designs appeal to be heard by an Appointed Person Registered Designs Act 1949 (as amended); Consolidated Proceedings; In the Matter of Registered Designs Nos. 4019752 and 4019267; In the Name of Ahmet Erol and Requests to Invalidate (Nos. 42/14 and 43/14); By Sumaira Javaid Erol v Javaid (Appeal 0/253/17) Under the Intellectual Property Act 2014, a new route of appeals for designs was created. This new route mirrors that used in... - 17 March 2016
Board of Appeal held ‘CORN THINS’ describes the intended goods - slices as thin and made of corn
RUDE HEALTH FOODS LIMITED V REAL FOODS PTY LTD – CASE R 871/2015-4 This case concerns the Board of Appeal holding that ‘CORN THINS’ is descriptive and therefore lacks distinctiveness. Real Foods obtained an international registration designating the EU for the mark ‘CORN THINS’ for ‘crispbread slices predominantly of corn’ in class 30. Two years after it was registered, Rude Heath Foods Limited filed an application for invalidation of the effects of the international registration designating... - 11 February 2016
Mandatory injunction granted at interim stage in confidential information case
Arthur J Gallagher Services (UK) Ltd and Ors v Alexandre Skriptchenko and Ors [2016] EWHC 603 This interim stage of the case involves an application by the claimants for interim relief prior to the main proceedings brought by the claimants against the defendants for breach of their confidential information. The proceedings were initiated by two claimants, both being part of the Arthur J Gallagher group (AJG Group) of companies, against two defendants, the first being Mr Skriptchenko, a former... - 04 February 2016
Youssef Hassan v Breiding Vertriebsgesellschaft mbH, Case C‑163/15
Hassan v Breiding is a CJEU referral from a German domestic case concerning trade mark infringement action brought by Breiding, the unregistered licensee of the trade mark ‘ARKTIS’ for bedding and blankets, against Hassan. The CJEU was asked by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) does Article 23(1) of Council Regulation (EC) No 207/2009 (the ‘EU TM Regulation’) require a trade mark licence to be registered to enable the licensee to bring action for trade mark... - 11 December 2015
Domain Name Law and Practice, An International Handbook Published
Palmer Biggs Legal contributing authors: Domain Name Law and Practice, An International Handbook (2nd edition Published: 26 November 2015) Dawn Osborne and Steve Palmer of Palmer Biggs Legal are contributing authors to the newly released leading work on international domain name law and practice: Domain Name Law and Practice, An International Handbook, published by Oxford University Press (2nd edition Published: 26 November 2015). Dawn and Steve contributed the UK chapter of this Domain Name... - 04 December 2015
K-Swiss Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) Case T 3/15
This case concerns a refusal of a EUTM application on grounds that the mark applied for, consisting of 5 parallel stripes on the side of a sports shoe in class 25, was devoid of distinctive character. The General Court agreed with the Board of Appeal’s analysis that the stripes on the shoe were decorative and mere embellishment. The General Court concluded that it is general practice for sports shoe manufactures to place simple patterns on the side of shoes, and noted that the lines on the... - 03 September 2015
Impulse: Territorial Reputation Clarified
IRON & SMITH KFT V UNILEVER NV, CASE C-125/14 Iron & Smith made an application for a national figurative mark containing the words “be impulsive” at the Hungarian IPO in 2012. Unilever opposed this application by referring to their earlier Community trade mark (‘CTM’) (now known as an EU Trade Mark) for the word “IMPULSE”. Unilever argued, in accordance with Article 4(3) of the European Trade Marks Directive, that their CTM was a mark with a reputation, and that Iron & Smith’s mark was... - 19 March 2015
CJEU’s ruling on assessment of likelihood of confusion and providing sufficient reasoning for coming to a decision
Mega Brands International v OHIM (Case C-182/14 P) This case concerns the Court of Justice of the European Union (CJEU) deciding whether to set aside the General Court’s decision as it was alleged by the appellant, Mega Brands, that the General Court failed to carry out an assessment of the likelihood of confusion between two marks by not considering them in their entirety and did not sufficiently substantiate its reasoning for coming to the decision they did.Mega Brands trade mark... - 21 November 2014
John Kaldor Fabric Maker UK LTD v Lee Ann Fashions Ltd [2014] EWHC 3779
JK Fabric LA Fabric The case highlights the importance for designers to evidence each stage of the design process when creating a new design. John Kaldor Fashion Ltd issued proceedings against Lee Ann Fashions alleging copyright infringement and infringement of their unregistered community design in the JK Fabric when they became aware of a similar design being used for Per Una dresses (the ‘LA Fabric’). John Kaldor had previously supplied Lee Ann with the JK Fabric and alleged they had copied... - 17 October 2014
Cartier, Montblanc and Richemont v BskyB, BT, TalkTalk, EE and Virgin [2014] EWHC 3354 (Ch)
In its decision in Cartier, Montblanc and Richemont v BskyB, BT, TalkTalk, EE and Virgin [2014] EWHC 3354, the High Court has held that it is possible for trade mark owners to obtain orders against ISPs requiring them to block access to infringing websites on which infringing articles are advertised and sold. In his judgement, Arnold J granted injunctions in favour of the claimants requiring the defendants to block access to websites selling counterfeit watches. Such a finding is significant; it is... - 07 February 2014
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
No Joy for Fox Comic Enterprises run a number of UK comedy venues called the “Glee Club” and/or the “Glee Comedy Club”. Twentieth Century Fox are the well-known film and television production company who produce the hit TV series named “glee” which was aired in the UK. Comic Enterprises registered their “Glee Club” device mark in the UK in June 1999 in classes 25 and 41: Comic Enterprises issued proceedings in 2011 for trademark infringement and passing off in relation to this mark. Comic... - 27 November 2013
Mitchell v NGN – The first big test of the Jackson Reforms
The Court of Appeal has issued its judgment in Mitchell v NGN. The case was seen to be the first big test of the Jackson reforms. Andrew Mitchell MP was certainly the biggest and most high profile scalp of the reforms, which seek make not only justice but also proportionality of cost the underpinning of how cases are run. The background to the case was the defamation case brought by Mr Mitchell against NGN in relation to their reporting of the "Plebgate" row. During the litigation, a case... - 01 October 2013
Patents County Court renamed Intellectual Property Enterprise Court
On 1st October 2013, the Patents County Court will be renamed the Intellectual Property Enterprise Court. The court is also being brought under the wing of the Chancery Division of the High Court of England and Wales. The function of the Intellectual Property Enterprise court, which is based in London, will be to carry on the functions of the Patents County Court by hearing less complex cases relating to all intellectual property matters. - 27 September 2013
New UK fast-track TM opposition starts 1 October
The UKIPO is bringing in a new fast-track opposition procedure on 1 October 2013. You will be able to use this procedure if you are opposing an application purely on the basis of identical or similar marks registered for the same or similar goods or services. You will be limited to a maximum of three earlier marks and these must be registered as UK or Community trades or be protected in the UK or EU as International registrations. The fast-track procedure will have a lower official fee than... - 02 July 2013
Proposed changes to UK Registered Designs introduced by the new Intellectual Property Bill
At present, there are no criminal sanctions for those who infringe UK and/or Community registered designs or design rights even though they are defined in their respective legislations as a 'personal property' and 'property right'. The new Intellectual Property Bill (the 'IP Bill') proposes to extend criminal sanctions to those who are deliberately copying UK and Community registered designs. A person commits this criminal offence if, in the course of a business, they copy a registered design so as...
