trade marks – Page 6 – Current Awareness

“Supreme” caution required when applying “double identity” rule – RPC IP Hub

Posted March 19th, 2015 in intellectual property, news, trade marks by sally

‘A recent High Court decision1 not only demonstrates the difficulty for trade mark owners in enforcing descriptive trade marks (and the risk that those trade marks may be found to be invalid) but also highlights potential pitfalls where trade marks co-exist within the same market. Also of interest is Arnold J’s criticism of the Court of Appeal’s decision in Interflora with regard to burden of proof for “double identity” cases.’

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RPC IP Hub, 17th March 2015

Source: www.rpc.co.uk

Branded drugs and over-stickering: when is 8.62% a substantial part? – Technology Law Update

Posted March 9th, 2015 in appeals, consumer protection, EC law, freedom of movement, medicines, news, trade marks by tracey

‘A brand-owner generally wants to use the same brand across several countries, but there are industries where national branding is common. Pharmaceuticals is one. In a free trade bloc like the EU this leads to a tension between the free movement of goods and protection of IP rights. The interplay of the EU rules in this area has come under the spotlight in SEP v Doncaster.’

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Technology Law Update, 6th March 2015

Source: www.technology-law-blog.co.uk

Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd – NIPC Law

Posted March 2nd, 2015 in intellectual property, news, trade marks by sally

‘The Lincolnshire town of Grantham educated one of the world’s greatest scientists and the first woman to be British prime minister (see “Frit” – Merck Sharp Dohme Corp v Teva Pharma BV 25 March 2012). It has a magnificent parish church and is home to Chantry Dance Company which is very special to me as you will see from the last video clip in Chantry Dance Company’s Sandman and Dream Dance 10 May 2014 Terpsichore if you read that far. It has a pub called The Beehive with a real beehive for the pub sign (how’s that for imaginative branding). Each Autumn it holds a science and arts festival in honour of Sir Isaac Newton called Gravity Fields (see Gravity Fields Festival – there’s much more to Grantham than Mrs T 8 Aug 2014 East Midlands IP).’

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NIPC Law, 28th February 2015

Source: www.nipclaw.blogspot.co.uk

Court of Appeal upholds Birss J in Rihanna’s Case – NIPC Law

Posted January 27th, 2015 in appeals, intellectual property, misrepresentation, news, trade marks by sally

‘In Fenty and Others v Arcadia Group Brands Ltd and another [2013] EWHC 2310 (Ch), [2013] WLR(D) 310 Mr Justice Birss gave judgment to Robyn Rihanna Fenty (better known as Rihanna) and her corporate licensing companies against Top Shop for selling a t-shirt that reproduced a photo of the singer. The claim was brought not for infringement of copyright since the owner of the copyright in the photograph had licensed the reproduction of his work but for passing off. Rihanna and her companies had claimed that the t-shirt misrepresented authorization or approval of the manufacture and distribution of the garments and that such misrepresentation damaged her commercial activities. I wrote about the case in Passing off – Fenty v Topshop 10 Sept 2013 and readers are referred to that note for an appreciation of the judgment.’

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NIPC Law, 24th January 2015

Source: www.nipclaw.blogspot.co.uk

A landmark decision for brand owners: Court rules ISP blocking orders extend to trademark rights – RPC IP Hub

Posted January 8th, 2015 in EC law, injunctions, intellectual property, internet, news, proportionality, trade marks by sally

‘The High Court has recently granted Richemont a blocking order requiring the five largest ISPs in the UK to prevent access to various third party websites from advertising and selling goods which infringe Richemont’s trade mark rights. This was the first time that such a blocking order had been sought against ISPs on the basis of trade mark infringement anywhere in the EU (other than, perhaps, in the Danish case of Home v Telenor).’

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RPC IP Hub, 8th January 2015

Source: www.rpc.co.uk

Keyword confusion – Interflora v Marks & Spencer sent for retrial – Technology Law Update

Posted November 17th, 2014 in advertising, appeals, injunctions, internet, news, statistics, trade marks by sally

‘Online retailing is growing fast. Research suggests that it makes up over 12% of UK retail sales, with the US and Germany close behind. Many of the advertising and promotional techniques used in e-commerce are necessarily different from those deployed in more traditional sales methods. One of the techniques currently popular is the use of keyword advertising such as Google’s AdWords.’

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Technology Law Update, 12th November 2014

Source: www.technology-law-blog.co.uk

Interflora Inc and another v Marks and Spencer plc (No 5) – WLR Daily

Posted November 11th, 2014 in advertising, appeals, burden of proof, internet, law reports, trade marks by tracey

Interflora Inc and another v Marks and Spencer plc (No 5): [2014] EWCA Civ 1403; [2014] WLR (D) 473

‘On a claim for infringement of a trade mark under article 5(1)(a) of Council Directive 89/104/EEC through keyword advertising the onus of proof lay on the trade mark proprietor to establish that the advertisement complained of did not enable normally informed and reasonably attentive Internet users, or enabled them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originated from the trade mark proprietor or an undertaking economically connected to it or, on the contrary, originated from a third party.’

WLR Daily, 5th November 2014

Source: www.iclr.co.uk

Use of a Trade Mark: Specsavers v ASDA – NIPC Law

Posted October 22nd, 2014 in appeals, news, trade marks by sally

‘In Community Trade Marks: Specsavers v ASDA 7 Feb 2012 NIPC Law I analysed the litigation that had taken place between two well known retailers in which the Court of Appeal considered how far an aggressive marketing campaign can go without infringing trade mark law. As I said in my case note Specsavers International Healthcare Ltd and others (“Specsavers”) had brought an action for trade mark infringement and passing off against the supermarket chain Asda Stores Ltd. (“ASDA”) for using the marketing materials that I identified in my note and Asda counterclaimed for revocation of Community trade mark 1358589 depicted above (“the wordless mark”) for non-use.’

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NIPC Law, 16th October 2014

Source: www.nipclaw.blogspot.co.uk

Internet service providers must help crack down on fake goods, high court rules – The Guardian

Posted October 21st, 2014 in costs, counterfeiting, injunctions, internet, news, trade marks by sally

‘A landmark British test case has opened the gates for brand owners to compel internet service providers (ISPs) to police trademark infringement at scale, in addition to their already controversial role in copyright enforcement.’

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The Guardian, 20th October 2014

Source: www.guardian.co.uk

Let’s take another look at Specsavers v Asda – Technology Law Update

Posted October 20th, 2014 in appeals, EC law, news, trade marks by sally

‘Well-known optical retailer Specsavers uses a logo composed of green overlapping ellipses overlaid with its name ( you can see their branding here). Specsavers had registered as a Community trade mark a black “wordless” version of the linked ellipses. Asda started using branding for its own opticians service that included ellipses that touched but did not overlap, overlaid with the words “ASDA” and “Opticians” in each ellipse. Specsavers sued Asda for trade mark infringement.’

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Technology Law Update, 17th October 2014

Source: www.technology-law-blog.co.uk

‘Background’ trade marks may be valid even if never used as registered , UK court rules – OUT-LAW.com

Posted October 17th, 2014 in appeals, EC law, news, trade marks by tracey

‘Wordless logo trade marks that are never used in isolation can defeat a legal challenge brought on the basis that they have never been used, a UK court has ruled.’

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OUT-LAW.com, 16th October 2014

Source: www.out-law.com

Academy loses High Court passing off action brought against private college – Local Government Lawyer

Posted October 2nd, 2014 in education, intellectual property, news, trade marks by tracey

‘An academy school has lost an action for passing-off taken against a nearby private college.’

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Local Government Lawyer, 2nd October 2014

Source: www.localgovernment lawyer.co.uk

Cartier launches legal attempt to block websites selling counterfeit goods – The Guardian

Posted September 26th, 2014 in counterfeiting, electronic commerce, injunctions, internet, news, trade marks by tracey

‘Cartier International, the luxury watch and jewellery company, is attempting to block websites allegedly selling counterfeit goods in a test case that could have far-reaching consequences for the internet. Lawyers for the Paris-based company launched their claim at the high court in London on Thursday. It is believed to be the first time online service providers have been asked to close down websites on the grounds that they feature pirated trademark logos.’

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The Guardian, 25th September 2014

Source: www.guardian.co.uk

The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 – NIPC Law

Posted September 8th, 2014 in bills, copyright, damages, intellectual property, news, patents, trade marks by sally

‘On 14 May 2014 the Intellectual Property Bill received royal assent. The Act made some far reaching changes in patents, registered design and unregistered design right law which I summarized in “Reflections on the Intellectual Property Act 2014” 7 June 2014 4-5 IP Tech and discussed in detail in “How the Intellectual Property Act 2014 changes British Patent Law” 21 June 2014 JD Supra, “How the Intellectual Property Act 2014 changes British Registered Design Law” 19 June 2014 JD Supra and “How the Intellectual Property Act 2014 will change British Unregistered Design Right Law” 11 June 2014 JD Supra 11 June 2014. On 28 Aug 2014 Lady Neville-Rolfe, Minister for Intellectual Property, signed The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 which will bring many of the provisions of the Act into force.’

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NIPC Law, 6th September 2014

Source: www.nipclaw.blogspot.co.uk

New criminal offence for design rights infringement to take effect from October – OUT-LAW.com

Posted September 8th, 2014 in copyright, criminal justice, intellectual property, news, trade marks by sally

‘Criminal penalties could be pursued against intentional copiers of either UK or Community registered designs that do not have rights holders’ permission for their actions from the beginning of next month.’

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OUT-LAW.com, 5th September 2014

Source: www.out-law.com

Who’s Pink – Thomas Pink or Victoria’s Secret? – NIPC Law

Posted September 1st, 2014 in news, trade marks by sally

‘In Thomas Pink Limited v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch) (31 July 2014) Mr Justice Birss had to resolve a dispute between two well known retailers. The claimant was Thomas Pink which had started life as a specialist shirt maker in Jeremyn Street. It is now part of the LVMH Group the interests of which range from champagne to fashion.’

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NIPC Law, 31st August 2014

Source: www.nipclaw.blogspot.co.uk

Shirtmaker Thomas Pink wins infringement case against Victoria’s Secret Pink line – Daily Telegraph

Posted August 1st, 2014 in news, trade marks by sally

Victoria’s Secret could be ordered to withdraw its Pink brand from UK stores after a High Court judge ruled that it could cause a detriment to the repute of Thomas Pink’s mark

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Daily Telegraph, 31st July 2014

Source: www.telegraph.co.uk

‘Skywalker’ signature rejected by passport officials – BBC News

Posted July 30th, 2014 in film industry, names, news, passports, trade marks by sally

‘A woman who added “Skywalker” as a middle name has been told by passport officials her signature infringes a trademark.’

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BBC News, 30th July 2014

Source: www.bbc.co.uk

Oberbank AG v Deutscher Sparkassen-und Giroverband eV; Banco Santander SA and another v Same – WLR Daily

Posted June 24th, 2014 in banking, EC law, intellectual property, law reports, trade marks by sally

Oberbank AG v Deutscher Sparkassen-und Giroverband eV; Banco Santander SA and another v Same (Joined Cases C-217/13 and C-218/13); ECLI:EU:C:2014:2012; [2014] WLR (D) 274

‘Article 3(1) and (3) of Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the member states relating to trade marks precluded an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark had acquired a distinctive character through use, it was necessary in every case that a consumer survey indicated a degree of recognition of at least 70%.’

WLR Daily, 19th June 2014

Source: www.iclr.co.uk