#IPrights

Jul 3, 2021
2 min

What happened to Colin the Caterpillar & what does it mean for your brand?

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

Jun 14, 2021
1 min

Have your say about the exhaustion of IP rights in the UK

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

May 8, 2021
2 min

MONOPOLY cannot last forever without regular use

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

May 1, 2021
2 min

Trade mark infringement claim upheld

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 [2021] 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

May 1, 2021
2 min

Database extraction was authorised

This was a complex dispute concerning a claims management database. It involved alleged infringement of a database right, misuse of confidential information and breach of fiduciary duty. It was decided by His Honour Judge Cawson QC, sitting as a judge of the High Court in Manchester, on 19 March 2021. The claim was brought by claims management company DRSP against Thomas O’Connor and Octax Limited. Mr O’Connor worked for DRSP until February 2018, after which he became a consu

May 1, 2021
3 min

Which IP rights subsist in an XML Schema?

Disputes relating to software are often complex, with multiple parties and issues involved. However, they can also illuminate important questions. Software Solutions Ltd & Ors v 365 Health and Wellbeing Ltd & Anor, a judgment by HHJ Melissa Clarke in February 2021, is a good example. While numerous companies were involved in the case at various stages, the question essentially was whether version 5 of a mental health application called Beating the Blues (BTB v 5) infringed co

Apr 21, 2021
2 min

Satan Shoes - Nike and the devil tussle over trade mark exhaustion

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

Feb 22, 2021
1 min

Are you Notorious? The USTR updates its list of Notorious Markets

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,

Feb 19, 2021
1 min

USTR Notorious Markets List

Jun 8, 2020
4 min

Digging Designs - what's been happening in the last six months?

My final IPKat post was dedicated to one of my favourite IP topics - designs. They are forgotten and misunderstood rights which is a shame because they straddle the issues facing all of the different IP rights. It's hard to truly understand designs without also understanding trade mark, patent and copyright law first. This post is a whistle stop tour of some recent design decisions you may have missed and the first in a regular series of six monthly posts on this topic which

Nov 27, 2018
2 min

Unregistered designs - the unknown but super useful IP right

Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were published last week. My key takeaway is that the designs community does not appreciate the value of designs - particularly unregistered designs. This post aims to change that. Unregistered vs unregistered designs In the report, unregistered designs were rated at the bottom of the list of useful right

Nov 27, 2018
5 min

There's a new IPO report on designs infringement - game-changer or stating the obvious?

Four years is a long time in politics but not a particularly long time in the land of government reports. Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were recently published. Designs are an important part of the UK economy. In 2015, the UK design economy was worth 6% of the nation’s total economy. It was therefore considered a worthwhile exercise t

Nov 6, 2018
2 min

How do you get copyright protection?

Throughout Europe, and indeed in most jurisdictions worldwide, copyright arises automatically upon the creation of the work. Copyright is therefore a very flexible right which has come to the rescue of many a fashion brand. For the major international copyright treaties such as the Berne Convention and TRIPS, it is an essential requirement that all signatories (in practice most countries worldwide) offer automatic protection for copyright works. While you do not need to regis

Sep 24, 2018
1 min

Exhaustion of rights - a simple concept with important consequences

Exhaustion of rights is a concept which applies to all IP rights in Europe. Basically it means that if a product is sold ("put onto the market") in the European Economic Area (EEA), the owner of the IP rights in that product can’t prevent its resale elsewhere in the EEA. EEA = all EU member states + Iceland + Norway + Liechtenstein. E.g. if I buy one a scarf in Italy, the owner of the intellectual property rights in that scarf can’t stop me reselling it in Germany because the

Jun 29, 2017
4 min

Simplifying Community Registered Design litigation in the UK - Spin Master v PMS

Although it is a case management decision, there are so many hints in the recent decision Spin Master v PMS [2017] EWHC 1477 (Pat) that Mr Justice Carr wants the judgment to get wider circulation. As he puts it, the CMC raised the issue of "how to achieve short, cost-effective hearings where one or perhaps both parties are preparing for a much longer trial." Background to the dispute This dispute concerns alleged infringement of a Community registered design (002614669-0002)

European Fashion Law