‘Skywalker’ signature rejected by passport officials – BBC News
‘A woman who added “Skywalker” as a middle name has been told by passport officials her signature infringes a trademark.’
BBC News, 30th July 2014
Source: www.bbc.co.uk
Category: trade marks
Oberbank AG v Deutscher Sparkassen-und Giroverband eV; Banco Santander SA and another v Same – WLR Daily
‘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
Coty Germany GmbH (formerly Coty Prestige Lancaster Group GmbH) v First Note Perfumes NV – WLR Daily
‘The concept of “the member state in which the act of infringement has been committed” in article 93(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark meant that, in the event of a sale and delivery of a counterfeit product in one member state, followed by a resale by the purchaser in another member state, that provision did not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the member state where the court seised was situated.’
WLR Daily, 5th June 2014
Source: www.iclr.co.uk
Intellectual property law – achieving a balance between the right to enforce and protecting innovation – Law Commission
‘Patents, trade marks and design rights are valuable intellectual property (IP) rights and vital to economic growth. They ensure that research and innovation is encouraged and rewarded. And, for some small businesses, they can represent their most significant assets. The law provides effective ways to enforce IP rights but these can be misused to drive competitors from the market. In a report published today, the Law Commission is recommending reforms that will allow individuals and businesses to protect their IP rights but not at the expense of new ideas and inventions.’
Law Commission, 15th April 2014
Source: www.justice.gov.uk/lawcommission
Intellectual Property in the UK and Europe – Speech by Lord Neuberger
Intellectual Property in the UK and Europe (PDF)
Speech by Lord Neuberger
Burrell Lecture for the Competition Law, 1st April 2014
Source: www.supremecourt.uk
Trade Marks and Internet Searches: Lush v Amazon – NIPC Law
‘In Cosmetic Warriors Ltd and Another v amazon.co.uk Ltd and Another [2014] EWHC 181 Mr John Baldwin QC, sitting as a judge of the High Court, had to decide whether causing advertising to appear on an Internet user’s screen for products that competed with those of the claimants whenever the user entered the claimants’ trade mark into a search box amounted to an infringement of the claimants’ mark.’
NIPC Law, 7th April 2014
Source: www.nipclaw.blogspot.co.uk
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v National Lottery Commission – WLR Daily
‘In an application for a declaration of invalidity of a Community trade mark, where the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) was called upon to take account of the national law of the member state in which protection was given to an earlier mark on which the application was based, OHIM had to, of its own motion and by whatever means considered appropriate, obtain information about that national law, where such information was necessary for the purposes of assessing the applicability of a ground for invalidity relied on before it and of assessing the accuracy of the facts adduced or the probative value of the documents submitted.’
WLR Daily, 27th March 2014
Source: www.iclr.co.uk
“The Only Girl in the World”: the Rihanna judgment and the protection of ‘image rights’ in English law – Sports Law Bulletin from Blackstone Chambers
‘Despite the evident commercial value in the ‘image’ of modern sports personalities (indeed there are annual awards held by the BBC to identify the most noteworthy) there is no specific right to protect one’s image under English law. Relying on a cocktail of different causes of action and legal rights, English law offers some protections to a person whose ‘image’ is exploited for commercial reasons. The ingredients include: copyright and trademarks, the torts of defamation, breach of confidence, passing-off as well potentially through statutory rules ensuring data protection.’
Sports Law Bulletin from Blackstone Chambers, 7th March 2014
Source: www.sportslawbulletin.org
Backaldrin Österreich The Kornspitz Co GmbH v Pfahnl Backmittel GmbH – WLR Daily
‘Under article 12(2)(a) of Parliament and Council Directive 2008/95/EC a trade mark was liable to revocation in respect of a product for which it was registered if, in consequence of acts or “inactivity” of the proprietor, that trade mark had become the common name for that product from the point of view solely of end users of the product. There was “inactivity” if the proprietor of the trade mark did not encourage sellers to make more use of that mark in marketing a product in respect of which the mark was registered; and the revocation of a trade mark did not presuppose that it had to be ascertained whether there were other names for a product for which that trade mark had become the common name in the trade.’
WLR Daily, 6th March 2014
Source: www.iclr.co.uk
Registered Community Designs: Magmatic Ltd v PMS International Ltd – NIPC Law
‘In Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat) (11 July 2013) Mr Justice Arnold held that PMS International Ltd (“PMS”) had infringed registered Community design number 43427-0001 (“the RCD”), some of Magmatic Ltd (“Magmatic”)’s design rights and Magmatic’s literary copyright in its safety notice. Magmatic appealed to the Court of Appeal on the grounds that the judge fell into error in finding infringement of the RCD in that he had wrongly interpreted the RCD and improperly excluded from his consideration various aspects of the design of Magimax’s product. In Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181 (28 Feb 2014) the Court of Appeal (Lords Justices Moses and Kitchin and Lady Justice Black) allowed the appeal.’
NIPC Law, 4th March 2014
Source: www.nicplaw.blogspot.co.uk
Leidseplein Beheer BV and another v Red Bull GmbH and another – WLR Daily
Leidseplein Beheer BV and another v Red Bull GmbH and another (Case C-65/12); [2014] WLR (D) 48
‘Under article 5(2) of First Council Directive 89/104/EEC, the proprietor of a trade mark with a reputation could be obliged, pursuant to the concept of “due cause” within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which was identical to that for which that mark was registered, if it was demonstrated that the sign was being used before that mark was filed and that the use of that sign in relation to the identical product was in good faith.’
WLR Daily, 6th February 2014
Source: www.iclr.co.uk
Amazon and Lush ruling shows there’s an ‘added layer of protection’ against ‘piggy-backing’ on trade marks, says expert – OUT-LAW.com
‘Cosmetics company Lush was entitled to prevent Amazon using its trade mark to promote rival goods for sale on Amazon and via Google, the High Court has ruled.’
OUT-LAW.com, 10th February 2014
Source: www.out-law.com
“Unfair advantage” under the Trade Marks Directive – Competition Bulletin from Blackstone Chambers
‘Readers over the age of 24 do not fall into Jack Wills’ core target market, and may therefore be unfamiliar with the clothing brand’s “Mr Wills” pheasant logo. On the other hand, those readers who are Jack Wills devotees may want to check when you get home that you have not got confused and accidentally purchased, for about the same price, a House of Fraser product adorned with this equally delightful but nonetheless different bird. If you did get confused, it is perfectly understandable. After all, they’re both silhouettes of birds “equipped with accessories associated with an English gentleman”, as Mr Justice Arnold explained last week in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch).’
Competition Bulletin from Blackstone Chambers, 4th February 2014
Source: www.competitionbulletin.com
Illegal tobacco seller Roger Gerrey sold cigarettes to children – BBC News
‘A man who turned his Devon home into a shop selling illegal cigarettes to school children has been spared a jail sentence.’
BBC News, 9th January 2014
Source: www.bbc.co.uk
Rivella International AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) ( Baskaya di Baskaya Alim e C Sas intervening) – WLR Daily
‘Trade marks registered under international arrangements which had effect in a member state, as referred to in article 8(2)(a)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L78, p 1), were subject to the same system as trade marks registered in a member state, as referred to in article 8(2)(a)(ii) of the Regulation. As such, where pleaded in opposition proceedings before OHIM, they were subject to the requirement in article 42(3) of the Regulation to prove the requisite prior use, the concept of use of a Community trade mark in the European Union being exclusively and exhaustively governed by EU law.’
WLR Daily, 12th December 2013
Source: www.iclr.co.uk
Re-brand of imported drugs under locally used trade mark not justified, rules High Court – OUT-LAW.com
‘A drugs distributor was not justified in changing the name of products it had imported from France and Germany to sell into the UK to that of a rivals’ trade mark, the High Court has ruled.’
OUT-LAW.com, 25th November 2013
Source: www.out-law.com
Cadbury’s purple mark and Mattel’s Scrabble tile mark are tricky to register – Technology Law Update
“The Court of Appeal has recently handed down judgements in Société des Produits Nestlé SA v Cadbury UK Limited and JW Spear & Sons Limited, Mattel Inc & Mattel UK Limited v Zynga Inc, which emphasise the importance of complying with the conditions of Article 2 of the Trade Marks Directive 2008/95/EC as being a ‘sign’ capable of graphic representation.”
Technology Law Update, 15th November 2013
Source: www.technology-law-blog.co.uk
Sweet shop owner fined £400 for selling 30p Asda chocolate as £3 Wonka bars – The Independent
“A sweet shop owner has been fined after he sold 30p Asda Smart Price chocolate bars as ‘Wonka’ bars worth £3.”
The Independent, 5th November 2013
Source: www.independent.co.uk
