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.
A judge in the Patents Court has ruled that terms concerning the ownership and validity of IP rights in a settlement agreement were not “unenforceable penalty clauses”, in a case concerning patents for roofing products: Permavent Ltd & Anor v Makin  EWHC 467 (Ch). This case is very important in the context of IP settlement discussions. Creative solutions are often the key to reaching a longer lasting solution. However, if the contracting parties cannot have legal certai
The EU General Court has upheld a Board of Appeal ruling in a dispute between Chanel and Huawei, finding that Huawei’s EUTM application for a figurative H/U shape was not similar to Chanel’s Double-C trade mark (Case T-44/20, 21 April 2021). Huawei applied to register the EUTM for goods in class 9 in 2017 (far left). Chanel opposed the Huawei application based on two French trade marks (middle and right): (1) a figurative mark for “Cameras, sunglasses, glasses; earphones and
Occasionally IP disputes break into the public domain. This one has to do with Nike, a famous brand, and also to do with Satan. Rosie and Crafty Counsel investigated this issue as part of the Crafty Counsel Investigates series. Whilst the dispute was quickly resolved, the wider issues for brand owners worldwide remain noteworthy. What happened? A company called MSCHF was up to no good. They took some Nike Air trainers, added a drop of blood and water, and repackaged them as a
Is there a likelihood of confusion between the figurative signs pictured below (PANTHÉ and PANTHER) for “Clothing; Headgear” in Class 25? The EU General Court said "No". In doing so, they upheld a decision of the EUIPO Board of Appeal. The case is El Corte Inglés v EUIPO/MKR Design Srl (Case T-117/20). The judgment was published on 10 February 2021. So what happened? Spanish retailer El Corte Inglés opposed an EUTM application for the sign listed above (PANTHÉ) which was file
Trade marks may theoretically last forever but brands are subject to change. The Aunt Jemima brand of pancake mix and syrup will be renamed Pearl Milling Company, in response to concerns about racial stereotypes. The new brand harks back to the name of the originator of the self-rising pancake max and was announced by Quaker Oats (part of PepsiCo) on 10 February 2021. The Aunt Jemima brand, like the Washington Redskins, is being retired following the global attention that was
How can you stop someone from systematically copying your brand? What if it went further than just your designs and covered everything from your marketing strategy to your models? This major new UK fashion case shows the consequences which range from the predictable (copying valid designs has consequences) to the surprising (it isn't necessarily possible to stop all copycat behaviour). This case is a bit of a marathon read but it's a fantastic primer for anyone wanting to und
Image rights are both hugely important and a fallacy. The UK, has no specific law of "image rights" but it is possible to protect a person's image through a patchwork of laws including passing off, trade marks, data protection and privacy. Rosie has contributed a chapter on the UK approach to image rights for Imagen y Derecho de la Moda, a South American Year Book which is available for purchase here! Rosie's article (which is translated into Spanish) provides an overview of
Influencers are advertisers. This has been clear for some time. But now influencers are trending for the wrong reasons as the Advertising Standards Authority starts to clamp down on the use of filters for beauty products and failure to identify paid content. Use of filters Advertisers should not use filters on photos promoting beauty products on Instagram if the filters are likely to mislead or exaggerate regarding the effect the product was capable of achieving. This was the
With IP worth 75% of a business’ value why do less than 13% of businesses have IP insurance?
It’s fascinating to read the insurance industry’s perspective on this phenomenon: Protecting Intellectual Property in the new world order. I find insurance (& third party funding) essential in many disputes. In most cases, this is "After the Event" or ATE insurance.
Matthew Hogg and Edward Cartwright's article makes a great point that many people forget: you may assume that you have
In its annual review of markets that engage in or facilitate counterfeiting and piracy, the US Trade Representative has named 39 online markets (including many of Amazon’s foreign domains, Shopee and Taobao) and 34 physical markets. The European Commission published a similar list in its Counterfeit and Piracy Watch List in December 2020. Both lists provide useful information on the challenges IP rights owners face in enforcing their rights in the various online marketplaces,
It’s a sad consequence of the COVID-19 pandemic and the lockdowns in many countries that retailers have lost business, and regrettably some have gone into administration. But one thing that’s been notable in many cases is that the brands have proved attractive to buyers, even when the rest of the business has not. For example, Marks & Spencer recently bought the Jaeger fashion brand for an undisclosed fee after the company went into administration. It did not acquire any of t
The long-lasting litigation over the authorship of the screenplay for the 2016 film “Florence Foster Jenkins” has resulted in the court finding that Julia Kogan (the Claimant) was a co-author of the screenplay with the contribution valued at 20%. Mr Justice Meade’s decision came following a retrial after an earlier judgment was overturned by the Court of Appeal. This is an unusual decision which reflects a changing approach toward defining artistic contribution. Ms Kogan was