What’s your poison? A selection of recent trade mark decisions concerning the drinks industry – 3PB

Posted November 19th, 2020 in news, trade marks, trade names by sally

‘The Sazerac group is responsible for a wide variety of well-known spirits, including Southern Comfort. This case concerned one its bourbon brands, Eagle Rare. Sazerac had a UK and EU registered trade mark for “EAGLE RARE” in respect of class 33.’

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3PB, 3rd November 2020

Source: www.3pb.co.uk

Passing off – The Military Mutual Ltd v Police Mutual Assurance Society Ltd – NIPC Law

‘The claimant arranges insurance and mortgages for past and present members of the armed forces. On the “About Us” page of its website, it describers itself as “a Mutual set up to provide fair, financial services such as Home, Landlord, Military Kit and Business cover to those who are serving, veterans, families and supporters of our armed forces.” Note the use of the big letter “M” in mutual, That is a big part of the company’s ethos. It says that its “manifesto is very simple: always do the right thing for our Members.” The company has no shareholders or employees and is led in the main by retired senior officers who describe themselves as “customers and Members”. Anybody who acquires a policy or mortgage through the claimant company can become a member. Its business, however, is managed by Regis Mutual Management Limited.’

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NIPC Law, 10th August 2018

Source: nipclaw.blogspot.com

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

Source: nipclaw.blogspot.co.uk

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

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

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

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

YouView is sued over YourView naming dispute – BBC News

Posted November 26th, 2012 in injunctions, internet, news, telecommunications, trade marks, trade names by sally

“UK internet TV provider YouView has been sued for trademark infringement in a dispute over the product’s name.”

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BBC News, 26th November 2012

Source: www.bbc.co.uk

Protected food names: Quality or cartel? – BBC News

Posted November 20th, 2012 in food, news, protected geographical indication, trade names by sally

“What’s in a name? Well, if it’s the name of a tasty local food, then legal wrangles, multimillion-pound sales and the threat of small local traders going to the wall.”

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BBC News, 20th November 2012

Source: www.bbc.co.uk

OFT warns over ‘misleading’ business names – BBC News

Posted April 20th, 2012 in consumer protection, news, trade names by sally

“A regulator has warned businesses to avoid using ‘misleading or undesirable’ trading names.”

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BBC News, 20th April 2012

Source: www.bbc.co.uk

Bucks Fizz acts await name ruling – BBC News

Posted July 15th, 2011 in news, trade names by tracey

“Two acts vying for the right to use the name Bucks Fizz must wait for up to six weeks to discover which has triumphed.”

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BBC News, 15th July 2011

Source: www.bbc.co.uk

Hotel Cipriani Srl and others v Cipriani (Grosvenor Steet) Ltd and others – WLR Daily

Posted March 5th, 2010 in appeals, hotels, law reports, trade marks, trade names by sally

Hotel Cipriani Srl and others v Cipriani (Grosvenor Steet) Ltd and others [2010] EWCA Civ 110; [2010] WLR (D) 64

“The ‘own name’ defence under art 12(a) of Council Regulation (EC) 40/94, whereby a community trade mark did not entitle the proprietor to prohibit a third party from using in the course of trade his own name and address, could be available in respect of a trading name, as well as a corporate name of a company, but it would depend on: (i) the actual trading name that had been adopted; (ii) the circumstances in which it had been adopted; and (iii) depending on the circumstances, whether the use was in accordance with honest practices.”

WLR Daily, 4th March 2010

Source: www.lawreports.co.uk

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

Nude Brands fails to stop Stella McCartney’s ‘Stellanude’ perfume – OUT-LAW.com

Posted August 25th, 2009 in injunctions, news, trade names by sally

“Stella McCartney’s fashion house would suffer more than a small cosmetics company if its demand for an interim injunction was granted, the High Court has said. McCartney has won the right to use ‘nude’ in her perfume name until a full trial is heard.”

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OUT-LAW.com, 25th August 2009

Source: www.out-law.com

Chippendales dance troupe sues rival strippers – Daily Telegraph

Posted May 26th, 2009 in advertising, news, trade names by sally

“Chippendales, the male erotic dance troupe, has begun legal action to stop a rival group from using its name to promote a new British tour.”

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Daily Telegraph, 25th May 2009

Source: www.telegraph.co.uk

Bettys tearoom in row over name of cheese snack – Daily Telegraph

Posted October 15th, 2008 in news, trade names by sally

“Cups are being rattled over a small business’s decision to market ‘Fat Betty Cheesey Nibbles’ from elsewhere in Yorkshire. Bettys, which operates its six tearooms exclusively in the county, has lodged a complaint with the Patent Office because it believes there could be confusion.”

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Daily Telegraph, 15th October 2008

Source: www.telegraph.co.uk

Company name display rules will change in October – OUT-LAW.com

Posted September 12th, 2008 in company law, news, trade names by sally

“The law on companies’ display of names at their premises will change in three weeks’ time. From 1st October companies will have to display their registered name anywhere they do business, but will no longer have to put it on the outside of buildings.”

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OUT-LAW.com, 11th September 2008

Source: www.out-law.com

‘Easy’ threat to £5 curry house – BBC News

Posted July 22nd, 2008 in news, trade names by sally

“A new Indian restaurant may have to take on an international business in the High Court to keep its name.”

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BBC News, 22nd July 2008

Source: www.bbc.co.uk