An intergalactic battle over starwars.uk domain – Technology Law Update

Posted August 11th, 2015 in domain names, internet, news, trade marks by sally

‘A year after a change to UK domain names a skirmish in (web)space shows how effective Nominet’s Dispute Resolution Service can be in protecting a trade mark owner’s rights.’
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Technology Law Update, 6th August 2015

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

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Ukulele Wars: The Ukulele Orchestra of Great Britain v Clausen – NIPC Law

Posted August 6th, 2015 in EC law, intellectual property, news, striking out, trade marks by sally

‘Although Judge Hacon’s decision in The Ukulele Orchestra of Great Britain v Clausen and Another [2015] EWHC 1772 (IPEC) was reported as a “victory” in the Independent (The Ukulele Orchestra of Great Britain wins duel with German ‘copycat’ 3 July 2015) it was somewhat of the pyrrhic kind. The Ukulele Orchestra of Great Britain sued The United Kingdom Ukulele Orchestra for trade mark infringement, copyright infringement and passing off and applied to strike out the defence on the grounds of abuse of process less than two weeks before the trial. The claim succeeded on passing off but failed on all other counts. The claimants lost their Community trade mark and the judge saw no merit in the strike out application whatever.’

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NIPC Law, 5th August 2015

Source: www.nipclaw.blogspot.co.uk

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Feuding ukulele bands battle it out in court – BBC News

Posted July 3rd, 2015 in news, trade marks, trade names by tracey

‘The Ukulele Orchestra Of Great Britain (UOGB) has won a High Court ruling against a rival group which it accused of trading off its reputation.’

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BBC News, 2nd July 2015

Source: www.bbc.co.uk

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Nestle faces setback in KitKat trademark battle – BBC News

Posted June 12th, 2015 in EC law, food, news, trade marks by sally

‘Confectionery giant Nestle’s attempt to trademark the shape of its four-finger KitKat bar in the UK does not comply with European law, a senior European Court lawyer has said.’

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BBC News, 11th June 2015

Source: www.bbc.co.uk

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Who, What, Why: Can the KitKat shape be a trademark? – BBC News

Posted June 5th, 2015 in food, intellectual property, news, trade marks by sally

‘Confectionery giant Nestle is attempting to turn the shape of the KitKat bar into a trademark. But is this possible, asks Justin Parkinson.’

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BBC News, 5th June 2015

Source: www.bbc.co.uk

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Tobacco companies prepare multi-billion compensation claims over UK plain packaging – Daily Telegraph

Posted May 22nd, 2015 in compensation, EC law, intellectual property, news, smoking, trade marks by sally

‘Tobacco companies are preparing to launch what could be one of the biggest ever legal claims against the British Government for losses as a result of the introduction of plain packaging for cigarettes.’
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Daily Telegraph, 21st May 2015

Source: www.telegraph.co.uk

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Business claiming ‘passing off’ must have UK customers before it can sue in UK, says Supreme Court – OUT-LAw.com

Posted May 15th, 2015 in foreign jurisdictions, media, news, Supreme Court, trade marks, trade names by tracey

‘The Hong Kong-based provider of internet TV subscription service NOW TV could not prevent Sky using the same name for a similar service in the UK because it did not have a UK customer base, the UK’s highest court has ruled.’

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OUT-LAW.com, 14th May 2015

Source: www.out-law.com

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Buying web addresses best protection for brands in light of expansion of domains – OUT-LAW.com

Posted March 27th, 2015 in domain names, internet, news, trade marks, trade names by sally

‘Businesses should respond to the growing number of domains by buying up the web addresses that pose a risk to their brands.’

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OUT-LAW.com, 26th March 2015

Source: www.out-law.com

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“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

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

‘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

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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

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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

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

‘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

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Dalsouple Societe Saumuroise du Caoutchouc v Dalsouple Direct Ltd and another – WLR Daily

Posted December 4th, 2014 in consent, EC law, law reports, news, standard of proof, trade marks by sally

Dalsouple Societe Saumuroise du Caoutchouc v Dalsouple Direct Ltd and another [2014] EWHC 3963 (Ch); [2014] WLR (D) 511

‘A person consenting to the registration of a trade mark for the purposes of article 4(5) of Parliament and Council Directive 2008/95/EC must unequivocally demonstrate his intention to renounce his rights. An express statement of consent would satisfy that requirement.’

WLR Daily, 1st December 2014

Source: www.iclr.co.uk

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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

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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

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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

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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

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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

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‘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

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