“Marks and Spencer has lost a five-year legal battle with Interflora after it bought advertising space tied to Google searches for the flower delivery network’s name.”
The Guardian, 21st May 2013
Source: www.guardian.co.uk
Colloseum Holding AG v Levi Strauss & Co (Case C–12/12); [2013] WLR (D) 143
“The condition of ‘genuine use’ of a trade mark, within the meaning of article 15(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, was satisfied where a registered trade mark, which had become distinctive as a result of the use of another composite mark of which it constituted one of the elements, was used only through that other composite mark, or where it was used only in conjunction with another mark, and the combination of those two marks was, furthermore, itself registered as a trade mark.”
WLR Daily, 18th April 2013
Source: www.iclr.co.uk
“A law reform body has proposed changes to the law that would make it easier for businesses seeking to protect their trade marks and design rights to make threats of legal action against alleged infringers of their rights without fear that those threats could be the subject of court action.”
OUT-LAW.com, 22nd April 2013
Source: www.out-law.com
“Courts can calculate trade mark infringement damages based on a hypothetical licensing arrangement, the High Court has said.”
OUT-LAW.com, 17th April 2013
Source: www.out-law.com
“In a consultation opening today, the Law Commission seeks views on reform of the law relating to groundless threats of litigation over patents, trade marks and design rights.”
Law Commission, 17th April 2013
Source: www.lawcommission.justice.gov.uk
Regina v Hampshire County Council [2013] WLR (D) 117
“There was no reason to stay confiscation proceedings where a trademark offence had been committed, because trademark offences were lifestyle, repeat offences, which did real damage to those entitled to the profits of a trademark and deprived the manufacturers of the legitimate fruits of the research and development of their product and it was proceeds which mattered rather than blame.”
WLR Daily, 20th March 2013
Source: www.iclr.co.uk
The exclusive right of the proprietor of a Community trade mark conferred by article 9(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extended to a third-party proprietor of a later registered Community trade mark, without the need for that later mark to have previously been declared invalid.
WLR Daily, 21st February 2013
Source: www.iclr.co.uk
Leno Merken BV v Hageldruis Beheer BV: (Case C-149/11); [2012] WLR (D) 388
“The territorial borders of the member states should be disregarded in the assessment of whether a trade mark had been put to ‘genuine use in the Community’ within the meaning of article 15(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark (OJ 2009 L78, p 1).”
WLR Daily, 19th December 2012
Source: www.iclr.co.uk
“UK internet TV provider YouView has been sued for trademark infringement in a dispute over the product’s name.”
BBC News, 26th November 2012
Source: www.bbc.co.uk
“YouView, the much-delayed internet-connected TV service that finally launched earlier this year, may now have to change its name or face paying damages for trademark infringement after losing a high court appeal.”
The Guardian, 14th November 2012
Source: www.guardian.co.uk
“BSkyB has won a high court trademark battle over the name of its new internet TV service, Now TV.”
The Guardian, 2nd November 2012
Source: www.guardian.co.uk
Rintisch v Eder: C-553/11; [2012] WLR (D) 289
“Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trade marks meant that the proprietor of a registered trade mark was not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it was used in a form which differed from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form was itself registered as a trade mark. The article precluded an interpretation of a national provision intended to transpose it into domestic law whereby article 10(2)(a) did not apply to a ‘defensive’ trade mark which was registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it was used.”
WLR Daily, 25th October 2012
Source: www.iclr.co.uk
“Christian Louboutin has secured the trademark for the distinctive red used on the soles of shoes he designs, and the retailer Harrods has a trademark over the shade of green synonymous with its brand. Now confectionery giant Cadbury has won a lengthy court battle giving it the right to the trademark for the distinctive colour of purple it uses for the packaging of its milk chocolate.”
The Guardian, 2nd October 2012
Source: www.guardian.co.uk
“Until now taking legal action against others who copy creative work, brand names and logos or otherwise try to take advantage of someone else’s creativity has been beyond the reach of most people. That changes on Monday when the small claims track becomes available for intellectual property claims in England and Wales.”
The Guardian, 2nd October 2012
Source: www.guardian.co.uk
Pie Optiek SPRL v Bureau Gevers SA and others: Case C-376/11; [2012] WLR (D) 219
“The third sub-paragraph of article 12(2) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration meant that, in a situation where the prior right concerned was a trade mark right, the words ‘licensees of prior rights’ did not refer to a person who had been authorised by the proprietor of the trade mark concerned solely to register, in his own name but on behalf of that proprietor, a domain name identical or similar to that trade mark, but without that person being authorised to use the trade mark commercially in a manner consistent with its functions.”
WLR Daily, 19th July 2012
Source: www.iclr.co.uk
Budéjovický Budvar, národní podnik v Anheuser-Busch Inc [2012] EWCA Civ 880; [2012] WLR (D) 190
“Where a longstanding situation of honest concurrent user of the same mark for goods had come about, each user could register its mark, and each could stop third parties from using it, but neither could stop the other.”
WLR Daily, 3rd July 2012
Source: www.iclr.co.uk
Samsung Electronics (UK) Ltd v Apple Inc: [2012] EWCA Civ 729; [2012] WLR (D) 166
“Where the proprietor of a registered Community design, the validity of which was already in issue in proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) or another Community design court, brought a counterclaim alleging infringement of the design against a claimant who had issued a claim in a Community design court seeking a declaration of non-infringement, the stay of proceedings required by article 91(1) of the Community Design Regulation was a stay of the counterclaim, not the claim.”
WLR Daily, 30th May 2012
Source: www.iclr.co.uk
Wintersteiger AG v Products 4U Sondermaschinenbau GmbH (Case C-523/10); [2012] WLR (D) 117
“Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters meant that an action relating to infringement of a trade mark registered in a member state because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another member state could be brought before either the courts of the member state in which the trade mark was registered or the courts of the member state of the place of establishment of the advertiser.”
WLR Daily, 19th April 2012
Source: www.iclr.co.uk
“An Australian man has been ordered to transfer his ownership of the richardbranson.xxx domain name to UK entrepreneur Richard Branson.”
OUT-LAW.com, 22nd February 2012
Source: www.out-law.com
Frisdranken Industrie Winters BV v Red Bull GmbH (Case C-119/10); [2012] WLR (D) 20
“A service provider who, under an order from and on the instructions of another person, filled packaging which was supplied to it by the other person who, in advance, affixed to it a sign which was identical with, or similar to, a sign protected as a trade mark did not itself make use of the sign that was liable to be prohibited under that provision.”
WLR Daily, 15th December 2012
Source: www.iclr.co.uk
