The latest Luxury Law Jurisdictional Comparison Guide has been released.
The Guide provides jurisdictional-specific answers and insights into how luxury businesses can protect their brands. It's written by IP legal experts from around the world and focuses on trade mark law, copyright, designs, privacy, product placement and the protection of corporate image and reputation. Rosie Burbidge wrote the UK chapter - available here. More information on the guide can be found here
We recently reported on the Litecoin case where an application to register a trade mark was found to constitute passing off (see blog post here). Whilst cryptocurrency and celestial beings may not, at first glance, have a lot in common, this decision considers similar issues. A recent IPEC decision over the mark ARCHANGEL ALCHEMY raised some similar issues. This was a dispute between two spiritual and holistic therapists regarding the sale of metaphysical/spiritual education
Good news for international trade mark filing! On 28 September, 2021, the United Arab Emirates Government and WIPO announced that the UAE will be joining the Madrid System. The UAE will be the 109th country to join the Madrid System (which now covers 125 countries). The Madrid Protocol will enter into force for UAE on 28 December, 2021. This is a big deal for brand owners looking for trade mark protection in the UAE, as filing costs have historically been particularly high in
We’ve all become more conscious of climate change and other environmental issues over the past 25 years – and that can be seen in the increase of “green” EU trade mark applications filed in that period. Research findings A recent study by EUIPO (Green EU trade marks: Analysis of goods and services specifications, 1996-2020) found that terms related to the protection of the environment and sustainability (such as photovoltaic, solar heating, wind energy and recycling) increase
In early 2021, Deputy High Court Judge David Stone (sitting in the IP Enterprise Court, IPEC) in a dispute over the use of the name CORMETON in relation to mechanical fire safety goods and services found there was trade mark infringement and passing off, but not copyright infringement. (You can read more about this decision here). He also ordered appropriate injunctions, delivery up, disclosure and orders for the election of a damages inquiry/account of profits. By the Summe
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
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 High Court has recently provided guidance for employees in relation to the Recast Brussels Regulation. This guidance can be neatly summarised as: France 1 England 0. The High Court has ruled in favour of two former employees in a case concerning Article 22.1 of the Recast Brussels Regulation (RBR). The judgment in Semtech Corporation & Ors v Lacuna Space Ltd & Ors clearly sets out the test to be applied in deciding whether disputes relate to contracts of employment. The i
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
A recent judgment from the IPEC provides a warning for anyone pursuing damages claims in IP cases. The process is time consuming, complex and may cost more in legal fees than the ultimate award. There are several bases upon which damages can be awarded. This case looks at loss of an opportunity and the notional royalty which might have been charged for the use. It also considered whether a damages uplift was justified on the basis of the flagrancy of the infringement. The alt
The EU General Court has upheld the EUIPO Board of Appeal decision in the MONOPOLY trade mark case. This is a long anticipated and important decision which will have an impact on trade mark portfolios in the EU and beyond. In essence, the EU has ruled that it is not permissible to refile the same or a similar trade mark within the 5 year grace period during which non-use requirements do not apply. What happened? Hasbro filed an EUTM application for MONOPOLY, covering various
The Court of Appeal has upheld a finding of trade mark infringement, but overturned a passing off finding, in a case concerning two UK trade marks for British Gymnastics. The Court’s judgment in UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association  EWCA Civ 425 was published on 16 March 2021. The dispute was between British Amateur Gymnastics Association (BAGA), proprietor of two UK trade marks for British Gymnastics, and UK Gymnastics (UKG), which uses both
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