#TM

Sep 27, 2021
4 min

Rare defeat for easyGroup

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 [2021] EWHC 2150 (Ch)). Chief Insolvency and Companies Court Judge Briggs dismissed easyGroup’s infringement and passing off claims against easylife. An importan

Sep 2, 2021
3 min

Cheers to a rare EAGLE trade mark decision

This Court of Appeal decision is a helpful reminder that a lack of evidence of actual confusion is not necessarily fatal to a finding of trade mark infringement. The two IP specialist judges and one of the few female judges in the Court of Appeal upheld a finding of likelihood of indirect confusion between EU and UK trade marks for EAGLE RARE (registered for, respectively "bourbon whiskey" and "whiskey" and other goods in class 33) and a bourbon whiskey sold under the name AM

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
2 min

FOOTWARE trade mark not descriptive

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 [2021] EWHC 1438 (Ch))

Jun 14, 2021
2 min

What does MADE IN BRITAIN mean?

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

Jun 14, 2021
2 min

Resell, resell, resell! Etsy buys Depop

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

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

Chanel and Huawei logos are dissimilar

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

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

Apr 17, 2021
2 min

The straw that broke the camel's CRYPTOBACK? Trade mark survives validity challenge

The IP Enterprise Court (IPEC) has enabled smaller businesses to fight back against perceived intellectual property (IP) injustices. Its simplified procedure, capped approach to costs recovery and tight case management make it a much more effective means of dispute resolution for the majority of IP claims. A recent example of the IPEC in action looks at cryptocurrency. Wirex Ltd v Cryptocarbon Global Ltd & Ors concerns a UK trade mark registration for CRYPTOBACK. The trade ma

Mar 9, 2021
2 min

Walk like a PANTHÉ - Visual perception is key for fashion trade marks says EU

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

Dec 6, 2019
7 min

You can't cruise from cars to clothing - luxury trade marks and brand extensions post Bentley

Bentley Clothing v Bentley Motors [2019] EWHC 2925 is a classic David v Goliath dispute. You have a small family owned business versus a multinational corporation - Bentley Motors is part of Volkswagen. This case is a helpful reminder for large brand holders everywhere that establishing a reputation and a trade mark portfolio in relation to some goods and services does not give you an automatic right to enter into new markets where there are earlier rightsholders (no matter t

Sep 4, 2019
2 min

Louboutin - red soles and trade mark protection

The red sole on the base of Louboutin shoes has been the focus of both media and legal attention for many years. There has been extensive litigation in the USA about the red sole (see here). In Europe, the issues have focused on Louboutin's various European trade marks for the red sole in relation to "Footwear (other than orthopaedic footwear)" in Benelux and "High-heeled shoes (except orthopaedic footwear)" at EUIPO. The mark's description refers to Pantone 18.1663TP and not

Mar 10, 2019
1 min

European Fashion Law: The book is out!

We have had the launch parties and the book is officially OUT NOW! I've had such lovely feedback already. I hope you both enjoy it and find it incredibly useful for you in your business or legal practice. What's European Fashion Law about? Fashion is big business - it has complicated supply chains, may involve large property portfolios of retail and warehouses and affects millions of employees and contractors. Fashion brands and the associated intellectual property are extrem

Mar 1, 2019
2 min

Brexit & IP - what you need to know

Brexit may be nearly upon us. If this happens after 29 March there are various short term consequences to registered rights in the UK and EU. You don't necessarily need to refile a UK mark but forewarned is forearmed. Registered EU trade marks All existing EU trade marks will still cover the UK post Brexit but they will change identity. From Brexit day, EU trade marks in the UK will automatically convert into “Comparable Trade Marks (EU)”. No fee is payable and the owners of

Jan 5, 2019
2 min

Smells like IP infringement?

The fashion industry is no stranger to IP disputes. In the last year, The IPKat has written about disputes involving Zara, Nike and Nike and some innovative anti-counterfeiting from Deisel (sic). Whether it is competitor "inspiration" or a designer who inadvertently sells their name with their company the battles are myriad and go to the core of questions such as what is creativity and where the line is between standard design features and protectable IP rights. The latest de

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 23, 2018
5 min

Sustainability, cocktails and the V&A

On Thursday evening, V&A members and their friends convened in the Members Room for an evening of inspiring discussion about fashion and sustainability (and fair trade cocktails). The main event was a talk followed by a Q&A from Orsola de Castro the co-founder of Fashion Revolution. Her key takeaway message was that it is down to us to take responsibility for the origin of our clothes. The origins story Orsola explained that Fashion Revolution really began with the Rana Plaza

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