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 Caouchouc v Dalsouple Direct Ltd and another – WLR Daily

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

Dalsouple Societe Saumuroise du Caouchouc 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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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

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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

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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

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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

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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

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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

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‘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

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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

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Coty Germany GmbH (formerly Coty Prestige Lancaster Group GmbH) v First Note Perfumes NV – WLR Daily

Posted June 11th, 2014 in conflict of laws, EC law, jurisdiction, law reports, trade marks by sally

Coty Germany GmbH (formerly Coty Prestige Lancaster Group GmbH) v First Note Perfumes NV (Case C‑360/12); ECLI:EU:C:2014:911; [2014] WLR (D) 243

‘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

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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.’

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Law Commission, 15th April 2014

Source: www.justice.gov.uk/lawcommission

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Intellectual Property in the UK and Europe – Speech by Lord Neuberger

Posted April 14th, 2014 in EC law, intellectual property, news, patents, trade marks by sally

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

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