Samsung Electronics (UK) Ltd v Apple Inc – WLR Daily

Posted June 6th, 2012 in EC law, law reports, stay of proceedings, trade marks by tracey

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 – WLR Daily

Posted April 25th, 2012 in advertising, EC law, internet, jurisdiction, law reports, trade marks by sally

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

Branson wins right to own porn web address featuring his name – OUT-LAW.com

Posted February 22nd, 2012 in dispute resolution, domain names, internet, news, pornography, trade marks by sally

“An Australian man has been ordered to transfer his ownership of the richardbranson.xxx domain name to UK entrepreneur Richard Branson.”

Full story

OUT-LAW.com, 22nd February 2012

Source: www.out-law.com

Frisdranken Industrie Winters BV v Red Bull GmbH – WLR Daily

Posted February 3rd, 2012 in EC law, food, law reports, trade marks by sally

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

Court of Appeal dismisses William Hill’s 32Red appeal – The Lawyer

Posted January 26th, 2012 in appeals, gambling, news, trade marks by sally

“Bookmaker William Hill has lost an appeal against a High Court ruling that found the gambling giant’s online casino brand 32Vegas infringed a rival company’s trademarks.”

Full story

The Lawyer, 25th January 2012

Source: www.thelawyer.com

Cadbury mostly defends trade mark rights over purple shaded chocolate packaging – OUT- LAW.com

Posted November 9th, 2011 in news, trade marks by tracey

“The UK’s Trade Mark Registry has partially revoked, but mostly upheld, Cadbury’s right to trade mark a particular shade of purple in relation to chocolate products it manufactures.”

Full story

OUT-LAW.com, 8th November 2011

Source: www.out-law.com

Lady Gaga wins injunction against Lady Goo Goo – The Guardian

Posted October 14th, 2011 in injunctions, media, news, trade marks by tracey

“Lady Gaga may call her fans ‘little monsters’ but it appears she has no love for Moshi Monsters, after taking legal action in an effort to stop the children’s social network using an animated character, singer Lady Goo Goo. The Paparazzi singer gained an interim injunction against the parent company of the wildly popular Moshi Monsters, banning Lady Goo Goo from performing songs on YouTube, the Guardian has learned.”

Full story

The Guardian, 13th October 2011

Source: www.guardian.co.uk

Damages cap introduced for Patents County Court rulings on copyright and trade mark disputes – OUT-LAW.com

Posted October 4th, 2011 in copyright, damages, news, trade marks by tracey

“The Patents County Court (PCC) will be able to order damages payments of up to £500,000 for infringement of copyright and trade mark rights under a new law that came into effect on Saturday.”

Full story

OUT-LAW.com, 3rd October 2011

Source: www.out-law.com

Interflora Inc and another v Marks & Spencer plc (Case C-323/09) – WLR Daily

Posted September 28th, 2011 in advertising, EC law, internet, law reports, trade marks by sally

Interflora Inc and another v Marks & Spencer plc (Case C-323/09); [2011] WLR (D) 281

“Article 5(1)(a) of First Council Directive 89/104/EEC and article 9(1)(a) of Council Regulation (EC) No 40/94 on the Community trade mark was to be interpreted as meaning that the proprietor of a trade mark was entitled to prevent a competitor from advertising on the basis of a keyword which was identical with the trade mark and which had been selected in an internet referencing service by the competitor without the proprietor’s consent, where that use was liable to have an adverse effect on one of the functions of the trade mark. Article 5(2) of Directive 89/104 and article 9(1)(c) of Regulation No 40/94 was to be interpreted as meaning that the proprietor of a trade mark with a reputation was entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor had, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby took unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising was detrimental to that distinctive character (dilution) or to that repute (tarnishment).”

WLR Daily, 22nd September 2011

Source: www.iclr.co.uk

Budějovický Budvar, národní podnik v Anheuser-Busch Inc (Case C-482/09) – WLR Daily

Posted September 27th, 2011 in EC law, law reports, trade marks by sally

Budějovický Budvar, národní podnik v Anheuser-Busch Inc

“Acquiescence, within the meaning of article 9(1) of First Council Directive 89/104/EEC, was a concept of European Union law and the proprietor of an earlier trade mark could not be held to have acquiesced in the long and well-established honest use, of which he had long been aware, by a third party of a later trade mark which was identical with that of the proprietor if that proprietor was not in any position to oppose that use. Registration of the earlier trade mark in the member state concerned did not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in article 9(1).”

(Case C-482/09); [2011] WLR (D) 279

WLR Daily, 22nd September 2011

Source: www.iclr.co.uk

Original Bucks Fizz members lose trade mark battle over name – OUT-LAW.com

Posted September 7th, 2011 in news, performing arts, trade marks by sally

“The public would be likely to be confused if three original members of Bucks Fizz were allowed to register a trade mark that included the band’s name, the Intellectual Property Office (IPO) has ruled.”

Full story

OUT-LAW.com, 6th September 2011

Source: www.out-law.com

Bucks Fizz judge makes his mind up over ownership of name – The Guardian

Posted August 25th, 2011 in intellectual property, news, trade marks by sally

“The UK intellectual property office has been making its mind up which members of Bucks Fizz, the pop group which won the 1981 Eurovision song contest, are eligible to claim the name as their own.”

Full story

The Guardian, 24th August 2011

Source: www.guardian.co.uk

Money Saving Expert trade mark ‘sufficiently known in the market’ to be protected, says judge – OUT-LAW.com

Posted July 28th, 2011 in news, trade marks by tracey

“Consumer rights journalist Martin Lewis has won a High Court case protecting his ‘Money Saving Expert’ trade mark.”

Full story

OUT-LAW.com, 27th July 2011

Source: www.out-law.com

Online marketplaces liable for sellers’ infringement in ‘promoted’ sales, says ECJ – OUT-LAW.com

Posted July 12th, 2011 in EC law, internet, judgments, news, trade marks by tracey

“EBay and other online marketplaces will be liable for sellers’ trade mark infringements if they promote infringing sales or help sellers to ‘optimise’ their pages, the European Court of Justice (ECJ) has ruled.”

Full story

OUT-LAW.com, 12th July 2011

Source: www.out-law.com

War of the rose: Rival breweries fight legal battle – The Independent

Posted July 6th, 2011 in competition, news, trade marks by sally

“More than 700 years after the Plantagenet’s death, his floral emblem has become the subject of a struggle as lawyers representing two neighbouring Yorkshire brewers – one large, one small – square up in the High Court to argue their claims over the right to use the symbol in what has been dubbed the civil war of the rose.”

Full story

The Independent, 6th July 2011

Source: www.independent.co.uk

Gloucestershire Old Spots breeders win trademark case – BBC News

Posted June 9th, 2011 in animals, food, news, trade marks by tracey

“Breeders of Gloucestershire Old Spots pigs have won a trademark battle against a meat marketing company over the name of one of its products.”

Full story

BBC News, 9th June 2011

Source: www.bbc.co.uk

Best Buy Co Inc and another v Worldwide Sales Corporation Espaňa SL – WLR Daily

Best Buy Co Inc and another v Worldwide Sales Corporation Espaňa SL [2011] EWCA Civ 618; [2011] WLR (D) 173

“A person threatened another with proceedings for infringement of a registered trade mark within section 21 of the Trade Marks Act 1994 if he stated or implied that he would bring a claim if the other did not agree to the terms he proposed. The test to be applied was whether a reasonable recipient would understand the statements made to indicate nor merely an assertion of legal rights but an intention to enforce those rights.”

WLR Daily, 24th May 2011

Source: www.iclr.co.uk

Please note that once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Transport directory infringed Yellow Pages trade marks, court finds – OUT-LAW.com

Posted April 14th, 2011 in domain names, internet, news, trade marks by sally

“The use of ‘yellow pages’ in the domain www.transport-yellow-pages.com breached trade mark regulations, a court has ruled. A person finding the website in the UK could think it belonged to Yell, the England and Wales Patent County Court said.”

Full story

OUT-LAW.com, 14th April 2011

Source: www.out-law.com

Community trade mark court rulings should apply across the EU, ECJ rules – OUT-LAW.com

Posted April 14th, 2011 in EC law, judgments, news, trade marks by sally

“Rulings by Community trade mark courts should in most cases apply across the EU and not just in the country in which they were made, the European Court of Justice (ECJ) has said.”

Full story

OUT-LAW.com, 13th April 2011

Source: www.out-law.com

Ineos Healthcare Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Teva Pharmaceutical Industries Ltd, other party) – WLR Daily

Posted February 24th, 2011 in burden of proof, EC law, law reports, trade marks by sally

Ineos Healthcare Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Teva Pharmaceutical Industries Ltd, other party) (Case T-222/09); [2011] WLR (D) 53

“In opposition proceedings against registration of a trade mark pursuant to article 42 of Council Regulation (EC) No 40/94, the opposing party was not obliged to adduce evidence in support of the opposition. Whilst in relation to proceedings relating to relative grounds for refusal the Board of Appeal of the Office of Harmonisation in the Internal Market (Trade Marks and Designs) could take into account facts which were likely to be known by anyone or which might be learned from generally accessible sources, it was not, however, entitled to exceed the conditions governing examination set out in article 74 of Regulation 40/94.”

WLR Daily, 23rd February 2011

Source: www.lawreports.co.uk

Please note that once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.