Leidseplein Beheer BV and another v Red Bull GmbH and another – WLR Daily

Posted February 12th, 2014 in EC law, law reports, third parties, trade marks by sally

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

Posted February 12th, 2014 in advertising, internet, news, sale of goods, trade marks by sally

‘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.’

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OUT-LAW.com, 10th February 2014

Source: www.out-law.com

“Unfair advantage” under the Trade Marks Directive – Competition Bulletin from Blackstone Chambers

Posted February 7th, 2014 in consumer protection, news, trade marks by tracey

‘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).’

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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.’

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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

Posted December 17th, 2013 in appeals, EC law, intellectual property, law reports, regulations, trade marks, treaties by sally

Rivella International AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) ( Baskaya di Baskaya Alim e C Sas intervening) Case (C-445/12P); [2013] WLR (D) 493

‘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

Posted November 25th, 2013 in medicines, news, trade marks by tracey

‘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.’

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OUT-LAW.com, 25th November 2013

Source: www.out-law.com

Rihanna takes on Topshop: Get my face off that t-shirt! – OUP Blog

Posted November 18th, 2013 in consent, copyright, misrepresentation, news, privacy, trade marks by sally

“Robyn Fenty — Rihanna to most of us — enjoyed victory in the English High Court earlier this year when she succeeded in stopping High Street fashion retailer Topshop from selling an unauthorised t-shirt bearing her image. 12,000 units of this t-shirt were sold, most at £22 each.”

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OUP Blog, 15th November 2013

Source: www.blog.oup.com

Cadbury’s purple mark and Mattel’s Scrabble tile mark are tricky to register – Technology Law Update

Posted November 18th, 2013 in appeals, news, trade marks by sally

“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.”

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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

Posted November 6th, 2013 in consumer protection, costs, counterfeiting, fines, food, news, trade marks by sally

“A sweet shop owner has been fined after he sold 30p Asda Smart Price chocolate bars as ‘Wonka’ bars worth £3.”

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The Independent, 5th November 2013

Source: www.independent.co.uk

CoA rules Scrabble tile trademark to be invalid – The Lawyer

Posted October 15th, 2013 in appeals, intellectual property, news, trade marks by sally

“An attempt by the makers of Scrabble to protect its iconic letter tiles from imitations by claiming trademark rights has been thrown out by the Court of Appeal.”

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The Lawyer, 14th October 2013

Source: www.thelawyer.com

On the Tiles – the Court of Appeal’s Judgment in Spear and Others v Zynga – NIPC Law

Posted October 14th, 2013 in appeals, competition, EC law, news, trade marks by sally

“S.1 (1) of the Trade Marks Act 1994, which implements art 2 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, defines a trade mark as ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.’ If you are new to trade mark law or wish to be refreshed on the basics take a decko at ‘Introduction to Trade Marks’ in our IP South East blog of 9 Oct 2013.”

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NIPC Law, 13th October 2013

Source: www.nipclaw.blogspot.co.uk

The Colour Purple – Société Des Produits Nestlé S.A. v Cadbury UK Ltd – NIPC Law

Posted October 7th, 2013 in appeals, interpretation, news, trade marks by sally

“The colour purple (or rather pantone 2685C) is only slightly less gripping. It is the subject of a tussle between two of the world’s largest confectionery companies the latest stage of which has just ended in the Court of Appeal ( Société Des Produits Nestlé S.A. v Cadbury UK Ltd. [2013] EWCA Civ 1174 (4 Oct 2013)).”

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NIPC Law, 4th October 2013

Source: www.nipclaw.blogspot.co.uk

Martin Y Paz Diffusion SA v Depuydt and another – WLR Daily

Posted September 23rd, 2013 in consent, EC law, law reports, third parties, trade marks by sally

Martin Y Paz Diffusion SA v Depuydt and another (Case C-661/11); [2013] WLR (D) 351

“Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trade marks (OJ 1989 L40, p 1), as amended, precluded a proprietor of trade marks from being deprived of any possibility of asserting the exclusive right conferred upon it by those marks against a third party and of itself exercising that exclusive right in respect of goods which were identical to those of that third party, in a situation where the proprietor had consented to a shared use with that third party of signs which were identical to its marks in respect of certain goods in classes for which those marks were registered and no longer consented to that use.”

WLR Daily, 19th September 2013

Source: www.iclr.co.uk

Red Bull backs down over name dispute with Redwell brewery – The Independent

Posted August 16th, 2013 in intellectual property, news, trade marks, trade names by tracey

“The makers of the energy drink Red Bull have announced they will not proceed with a legal challenge against the Redwell brewery using its name on its beers because it is too similar.”

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The Independent, 15th August 2013

Source: www.independent.co.uk

Red Bull pursues Redwell brewery in Norwich over name – BBC News

Posted August 15th, 2013 in intellectual property, news, trade marks, trade names by sally

“A Norfolk micro brewery has been told it must change its name or face legal action, because it sounds too similar to the energy drink Red Bull.”

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BBC News, 14th August 2013

Source: www.bbc.co.uk

Trade mark owner wins right to block proposed new ‘top-level’ domain – OUT-LAW.com

Posted August 12th, 2013 in arbitration, domain names, intellectual property, internet, news, trade marks by sally

“A trade mark owner has won the right to stop its mark being adopted as a new generic ‘top-level’ domain (gTLD) by a rival company.”

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OUT-LAW.com, 9th August 2013

Source: www.out-law.com

Specsavers International Healthcare Ltd and others v Asda Stores Ltd – WLR Daily

Posted July 22nd, 2013 in appeals, EC law, law reports, trade marks by sally

Specsavers International Healthcare Ltd and others v Asda Stores Ltd (Case C-252/12); [2013] WLR (D) 287

“‘Genuine use’ within the meaning of article 15(1) and article 51(1)(a) of Council Regulation (EC) No 207/2009 could be fulfilled where a Community figurative mark was used only in conjunction with a Community word mark which was superimposed over it, and the combination of those two marks was, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark was used and that in which it was registered did not change the distinctive character of that trade mark as registered. Where a Community trade mark was not registered in colour, but the proprietor had used it extensively in a particular colour or combination of colours with the result that it had become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party used in order to represent a sign alleged to infringe that trade mark were relevant in the global assessment of the likelihood of confusion or unfair advantage pursuant to article 9(1)(b) and (c) of Regulation No 207/2009. The fact that the third party making use of a sign which allegedly infringed the registered trade mark was itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it used for the representation of that sign was relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of article 9(1)(b) and (c) of Regulation No 207/2009.”

WLR Daily, 18th July 2013

Source: www.iclr.co.uk

Trade Mark Infringement and Passing off: British Sky Broadcasting Group Plc v Microsoft Corporation – NIPC Law

Posted July 8th, 2013 in news, trade marks by sally

“In British Sky Broadcasting Group Plc and Others v Microsoft Corporation Microsoft and another [2013] EWHC 1826 (Ch), Sky (that is to say British Sky Broadcasting Group plc, Sky IP International Limited, British Sky Broadcasting Limited and Sky International AG) sued Microsoft (Microsoft Corporation and Microsoft Luxembourg Sarl) for infringement of its British and Community trade marks and passing off while Microsoft counterclaimed for declarations of invalidity of Sky’s trade marks on grounds of descriptiveness and impermissible amendment.”

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NIPC Law, 7th July 2013

Source: www.nipclaw.blogspot.co.uk

Malaysia Dairy Industries Pte Ltd v Ankenævnet for Patenter og Varemærker – WLR Daily

Posted July 1st, 2013 in EC law, interpretation, law reports, trade marks by tracey

Malaysia Dairy Industries Pte Ltd v Ankenævnet for Patenter og Varemærker: (Case C-320/12); [2013] WLR (D) 258

“The concept of ‘bad faith’ within article 4(4)(g) of Parliament and Council Directive 2008/95/EC of 22 October 2008 (to approximate the laws of the member states relating to trade marks) was an autonomous concept of European Union law which had to be given a uniform interpretation within the Union. The fact that the applicant for a trade mark registration knew or should have known that a third party was using a mark abroad at the time of filing his application, which was liable to be confused with his mark, was not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith. Member states were not permitted to introduce a system of specific protection of foreign marks which differed from the system established by article 4(4)(g) and which was based on the fact that the person making the application for registration of a mark knew or should have known of a foreign mark.”

WLR Daily, 27th June 2013

Source: www.iclr.co.uk

 

Interflora v Marks and Spencer- take care when using keywords! – Technology Law Update

Posted June 10th, 2013 in advertising, intellectual property, internet, news, trade marks by sally

“The High Court has recently ruled in Interflora’s favour in its long-running dispute with Marks and Spencer (Interflora, inc and Interflora British Unit v Marks and Spencer plc and Flowers Direct Online Limited [2013] EWHC 1291 (Ch)).”

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Technology Law Update, 10th June 2013

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