Kit Kat case: Time for a break in trademark row? – BBC News

Posted July 25th, 2018 in food, news, trade marks by tracey

‘When is a Kit Kat not a Kit Kat? If it’s a four-fingered wafer covered in chocolate, the Kit Kat people would tell you they own that design. Spare a thought, then, for identical treats like Norway’s Kvikk Lunsj – pronounced “quick lunch” – which has been around for 80 years. Nestlé has tried to trademark the chocolate bar’s three-dimensional shape for more than a decade, which rival Cadbury has fought hard against. The European Court of Justice is due to hand down judgement on Wednesday, which could end Kit Kat’s protected European status and a saga that has proved expensive for both sides.’

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BBC News, 25th July 2018


New UK trade mark laws finalised –

Posted July 13th, 2018 in news, trade marks by tracey

‘New UK trade mark laws have been finalised, although they will not take effect until early next year.’

Full Story, 13th July 2018


Brexit: trade marks and designs – 10 things to know –

Posted July 12th, 2018 in agreements, brexit, EC law, intellectual property, news, trade marks, treaties by sally

‘While Brexit negotiations between the UK and EU are ongoing, the UK government and European Commission have found an agreement in principle that will alleviate many right holders’ concerns in respect of trade marks and designs.’

Full Story, 11th July 2018


Nestlé’s KitKat dealt blow in trademark battle as EU adviser says it is not distinctive enough – Daily Telegraph

Posted April 20th, 2018 in EC law, food, news, trade marks by sally

‘KitKat faces the loss of EU trade mark protection for its four-fingered chocolate bar, after a senior adviser to the European Court of Justice said the shape was not recognised by customers in enough countries.’

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Daily Telegraph, 19th April 2018


UK to allow ‘moving image’ trade marks –

Posted February 21st, 2018 in news, trade marks by tracey

‘Businesses will be able to register trade marks for moving images under changes proposed to UK law.’

Full Story, 21st February 2018


Unconventional trade marks are coming to an IP office near you – Technology Law Update

Posted February 2nd, 2018 in EC law, news, trade marks by sally

‘Changes to EU trade mark law are introducing new-style trade marks like motion marks, audiovisual files and holograms. The old requirement to represent all marks graphically (written words, drawings etc) is on its way out, although of course basic lettering and graphical images still remain relevant for word and logo marks.’

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Technology Law Update, 1st February 2018


Supreme Court begins to hear arguments regarding website blocking for trade mark infringements –

Posted January 31st, 2018 in internet, news, Supreme Court, trade marks by sally

‘A case before the UK’s Supreme Court is set to provide guidance on whether and to what extent internet service providers (ISPs) will be expected to pick up the cost of blocking customers’ access to websites that facilitate the sale of fake goods, an intellectual property law expert has said.’

Full Story, 30th January 2018


Caspian Pizza Appeal – Caspian Pizza Ltd and Others v Shah and Another – NIPC Law

Posted December 13th, 2017 in food, news, trade marks, trade names by sally

‘In Caspian Pizza Ltd and Others v Shah and Another [2015] EWHC 3567 (IPEC) (9 Dec 2015) Judge Hacon dismissed a claim for trade mark infringement and passing off. The trade marks relied upon were the device mark that appears above and the word mark CASPIAN. The judge declared the word mark invalid because the defendants had run a restaurant called “CASPIAN” in another part of the country which constituted an “earlier right” within the meaning of s.5 (4) of the Trade Marks Act 1994. However, he did not declare the device mark invalid on the ground that the defendants had no goodwill in the running chef logo. I blogged about the case in Caspian Pizza Ltd and Others v Shah and Another on 24 Jan 2016.’

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NIPC Law, 12th December 2017


IP ‘threats’ law enters into force – Law Society’s Gazette

Posted October 3rd, 2017 in bills, intellectual property, news, trade marks by sally

‘A law that could help intellectual property owners assert their rights more freely came into force yesterday. The Intellectual Property (Unjustified Threats) Act 2017 curtails a legal remedy available to a party threatened with IP infringement.’

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Law Society's Gazette, 2nd October 2017


Trade Marks and Passing off – Coreix Ltd v Coretx Holdings Plc and Others – NIPC Law

Posted September 20th, 2017 in news, trade marks by sally

‘This was a claim for trade mark infringement and passing off and an application for the cancellation of CORETX as a UK trade mark. The action was brought by Coreix Ltd. (“Coreix”) which was the registered proprietor of the word mark COREIX. The defendants are members of a group of companies that include the word CORETX in their corporate names, have registered CORETX sign as a word mark and supply ICT services under that mark as well as a device mark that includes the word CORETX.’

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NIPC Law, 11th September 2017


The sale of ‘grey goods’ can attract criminal penalties under trade mark law, rules UK Supreme Court –

Posted August 4th, 2017 in news, parallel imports, penalties, third parties, trade marks by sally

‘Criminal penalties can be imposed on businesses that engage in the sale of so-called ‘grey goods’, the UK Supreme Court has ruled.’

Full Story, 3rd August 2017


Morally questionable trade marks: why the US and Europe see things differently – Technology Law Update

Posted June 28th, 2017 in EC law, news, trade marks by sally

‘In a landmark ruling last week, the US Supreme Court held that the rule against disparaging trademarks in the Lanham Act is unconstitutional under the First Amendment right to free speech. The case concerned an application by a rock band to register “THE SLANTS” (widely used as a slang, derogatory term for people of Asian descent) as a US Federal trademark. The band, themselves Asian American, were making a point, reclaiming a word that had been used against them as an insult. They certainly gained themselves some publicity along the way.’

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Technology Law Update, 27th June 2017


Firms face trade mark squatting woes – Law Society’s Gazette

Posted June 7th, 2017 in China, international law, law firms, news, trade marks by sally

‘International law firms face being held to ransom after falling foul of China’s problematic trade mark filing rules.’

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Law Society's Gazette, 6th June 2017


Mere association of Nestlé shape mark with Kit Kat brand ‘fatal’ to claims of acquired distinctiveness, rules court –

Posted May 24th, 2017 in appeals, EC law, food, intellectual property, news, trade marks by sally

‘Kit Kat manufacturer Nestlé has had its bid to trade mark the shape of its four-fingered chocolate bar rejected by the Court of Appeal in London in a ruling which could impact on similar applications to trade mark shapes deemed not to be inherently distinctive.’

Full story, 23rd May 2017


Nestlé foiled by Cadbury as it loses bid to trademark KitKat bar – The Independent

Posted May 18th, 2017 in appeals, food, intellectual property, news, trade marks by tracey

‘KitKat-maker Nestlé has been foiled again, after a UK Court of Appeal ruled that the consumer goods giant cannot trademark the shape of its popular four-fingered chocolate bar.’

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The Independent, 17th may 2017


Pictures alone cannot define how colour trade marks should be applied, rules Court of Appeal –

Posted May 15th, 2017 in appeals, EC law, news, trade marks by sally

‘Pictures alone cannot define how colour trade marks should be applied, the Court of Appeal in London has ruled.’

Full story, 12th May 2017


Drug company’s use of trade mark rights to restrict rival imports legitimate, rules Court of Appeal –

Posted April 7th, 2017 in medicines, news, trade marks by tracey

‘A drug company was entitled to rely on its trade mark rights to stop two businesses from importing into the UK the same product as it sold on the basis that the rivals’ product would be sold under the drug company’s name, the Court of Appeal in London has ruled.’

Full story, 6th April


Rivals’ keyword marketing activity censured by High Court –

Posted November 25th, 2016 in advertising, internet, news, trade marks by tracey

‘Online marketing activity carried out separately by two rival bathroom retailers respectively infringed trade mark and passing off rights, the High Court in London has ruled.’

Full story, 24th November 2016


Domain name suspensions more than double in a year, says UK registry –

Posted November 17th, 2016 in domain names, enforcement, intellectual property, news, police, reports, trade marks by sally

‘More than 8,000 web addresses were suspended by Nominet during the year up to the end of October 2016, more than double the number suspended in the previous 12 months, the internet registry for ‘.uk’ domain names has said.’

Full story, 17th November 2016


Great British Bake Off an example of the legal challenges in protecting TV formats, say experts –

Posted October 11th, 2016 in copyright, intellectual property, media, news, trade marks by sally

‘The recent sale of rights to broadcast The Great British Bake Off has highlighted the legal challenges facing broadcasters keen to protect their rights and interests in TV formats.’

Full story, 10th October 2016