China has been steadily overhauling its IP system for well over a decade. Last week, in the latest development, China joined WIPO’s Hague System for the International Registration of Industrial Designs bringing the total number of countries covered by the Hague System to 94. China is the largest market that remained outside of the Hague System until now. The EU, US, UK and Japan are all already members and the system is increasingly popular: the number of designs applied for
The Court of Appeal recently found that a company which had acquired the BEVERLY HILLS POLO CLUB trade marks was bound by an arbitration clause in an agreement signed by its predecessor. More details on the first instance decision are here. The case is Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors  EWCA Civ 51. What happened? Lifestyle Equities acquired the UK and EU trade marks for BEVERLY HILLS POLO CLUB in 2009. It subsequently sought to bring an actio
The unitary patent represents the biggest change to the IP landscape in Europe since the Community Trade Mark (now EUTM). Even if you’re not in a patent heavy industry, it has significant potential ramifications. Currently patents are granted on a country by country basis. Under the new system, a patent applicant will have the option to apply for a “unitary patent" or "UP” designation which means their patent will be granted as a single right across all UP states. This means
What happens when two parties cannot agree about the interpretation of an IP licence agreement? This question was recently examined by Deputy Master Raeburn in a dispute between a designer, Damian Evans, and the producer of homeware products, Joseph Joseph Limited (JJL). The judgment is available here. Kitchenware designs Evans had signed an agreement with JJL in 2007, under which he licensed to the company the IP rights in his designs for kitchenware. This was amended in 201
The UK Intellectual Property Office (UKIPO) has launched a call for views on the designs system. It says this will “help us better understand how we can make the most of new opportunities and flexibilities now that we have left the EU, and how new and emerging technologies may impact the design system.” Call for views The call for views seeks evidence on three main areas: (1) new opportunities, (2) future frameworks and (3) better regulation. It runs for eight weeks, closing
In short, yes: the UK courts can grant a pan-EU injunction in proceedings that were pending on 31 December 2020, the day the UK left the EU. That was the conclusion of Sir Julian Flaux, Chancellor of the High Court, in his judgment in a dispute between Easygroup and Beauty Perfectionists (& others) over the latter’s use of the name easyCOSMETICS. Under the EUTM Regulation, EU member states can designate national courts as EU trade mark courts. These courts have jurisdiction t
A legal action for unjustified threats is a serious risk that trade mark owners run when making allegations of infringement, including by issuing takedown notices via online platforms such as marketplaces. As a recent decision showed, the risk of unjustified threats should not be taken lightly. The decision came in a dispute over knitting needles. The case dates back to November 2015, when Indian company KnitPro issued takedown notices to Amazon UK regarding wooden knitting n
What connects Leonardo Da Vinci, a Christmas miracle and the possible award of exemplary damages? The answer lies in a recent High Court judgment by Mr Justice Jacobs (Salt Ship Design AS v Prysmian Powerlink SRL). The case concerned designs for a cable lay vessel produced by Salt Ship Design for Prysmian. The judge found that Prysmian (a company with annual revenue of €10 billion) had made the designs available to another designer, Vard Design AS, which was associated with t
When can component parts of a product be protected as unregistered Community designs (UCDs)? The Court of Justice of the EU (CJEU) recently answered that question in a case concerning design rights in a Ferrari car (Case C-123/20). The case, which was before the German Federal Court of Justice (BGH) related to the Ferrari FXX K model, presented to the public in December 2014 (pictured). Ferrari alleged that Mansory Design (and Mansory’s CEO) infringed its UCDs by marketing ki
easyGroup, which owns the IP rights for companies such as easyJet and easyHotel, has been active, and largely successful, in bringing actions against other companies using the “easy” prefix. However, it suffered a reverse in a recent judgment against an online retailer, easylife (Easygroup Ltd v Easylife Ltd & Anor  EWHC 2150 (Ch)).
Chief Insolvency and Companies Court Judge Briggs dismissed easyGroup’s infringement and passing off claims against easylife. An importan
We take legal research very seriously - in order to fully understand the implications of the most tasty dispute of the year, Colin vs Cuthbert, we had to undertake a detailed examination of Colin, including, of course, his taste. What we discovered will have implications for businesses across the land. The furore over Colin v Cuthbert has died down and the dispute appears to be heading toward settlement (either that or Cuthbert has had a very long time to file his Defence). C
Miss Recorder Amanda Michaels, sitting as a judge in the IPEC, has upheld a claim for passing off in a dispute between two jewellery designers. The claim was brought by Alyssa Smith Jewellery Limited, founded by Alyssa Smith, against Alisa Goodstone, who trades as Alyssa Jewellery Design. Ms Smith has operated a business since 2009, including via the websites www.alyssa-smith.com and (later) www.alyssasmith.co.uk as well as using the Twitter handle @AlyssaJewellery. She claim
Trade marks come in all shapes and sizes – words, slogans, colours, shapes, animations and more. One of the more unusual is a figurative EU trade mark registered by Pirelli for “Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds” in class 12. It's a tyre tread! The mark, as depicted, is a little abstract. In c
In short, "yes". Cybersquatters are a growing threat to brands. This trend has accelerated as e-commerce grows and consumers spend more time online. A new report suggests that cyber-squatters are cannier and more cunning than you might imagine. For brand owners, resolving domain name issues and filing defensive registrations eats up considerable time and effort. But as many have found to their cost, ignoring cybersquatting can lead to consumer confusion, loss of sales, fraud
As brands expand into new areas, particularly those driven by emerging technologies, they are often looking for innovative and memorable trade marks. Nike appears to have scored with its registration of FOOTWARE for various tech-related goods and services. In a judgment on 27 May 2021, High Court Judge Mr Justice Zacaroli upheld a UK IPO Hearing Officer’s decision rejecting Puma’s opposition to Nike’s registration of FOOTWARE (Puma SE v Nike Innovate CV  EWHC 1438 (Ch))
An integral part of the UK intellectual property system has been a focus on balancing creator protection with fair competition and consumer choice. Brexit means that this balance must once again be assessed as the EEA regime in relation to exhaustion (i.e. the movement of parallel imports AKA grey market goods) no longer applies in the UK. On 7 June 2021, the UK Government launched a consultation to collate views on the future of the exhaustion of IP rights in the UK. The con
After the many logistical issues posed by both Brexit and the pandemic and with sustainability at the forefront of everyone's mind, it is perhaps not surprising that there has been a 130% increase in businesses accepted to use the MADE IN BRITAIN mark on their goods. (Many more have applied but not met the relevant criteria.)
What is the legal framework that underpins this brand name and what exactly does "Made In Britain" mean?
Can anyone use MADE IN BRITAIN?
Made in Gre
The pandemic has had a deadly toll on bricks and mortar retail. This has particularly affected some department stores, including the flagship stores of brands like covid-casualty Top Shop. Is this a sign of things to come or is there an opportunity for a new renaissance? The Financial Times recently looked at this issue in detail. The answer seems to be a mix of architectural opportunities, mixed use spaces (weddings in Selfridges!) and, potentially, some bulldozing. We have
The retail space may still be recovering from some post Covid (& Brexit) turbulence, ecommerce continues to buck the trend. Etsy has acquired Depop, the British resale fashion platform, for a casual $1.6bn (£1.15bn). Trading and reselling vintage or recycled clothing online has now become a several multi-billion dollar market, but a multitude of IP issues come with it. Genuine Goods Not all products sold on platforms like Depop (or Etsy) are genuine. That great deal on a seco
The Court of Appeal has reviewed the law on liability and account of profits in a judgment concerning the BEVERLY HILLS POLO CLUB trade mark (Lifestyle Equities C.V. & Anor v Ahmed & Anor  EWCA Civ 675). The case is one of many that are winding their way through the courts concerning this brand. In this litigation, the judge at first instance found that the use of SANTA MONICA POLO CLUB infringed the BEVERLY HILLS POLO CLUB mark and devices, and also found passing off.