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European Fashion Law

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    How should an IP licence agreement be interpreted?
    • Feb 27
    • 2 min

    How should an IP licence agreement be interpreted?

    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
    Can UK courts grant pan-EU injunctions in proceedings began pre-Brexit ?
    • Jan 29
    • 2 min

    Can UK courts grant pan-EU injunctions in proceedings began pre-Brexit ?

    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
    What's the risk of filing a takedown notice?
    • Jan 29
    • 2 min

    What's the risk of filing a takedown notice?

    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
    When is purchasing an old trade mark a good idea?
    • Jan 12
    • 2 min

    When is purchasing an old trade mark a good idea?

    Trade mark infringement, honest concurrent use and so-called “moribund marks” were the focus of an interim decision in a case concerning alleged infringement of the claimant's trade marks STEALTH and STEALTH VR (stylised) for gaming headsets: ABP Technology Ltd v Voyetra Turtle Beach, Inc. & Anor (Rev1). ABP Technology claimed that the defendants’ use of the STEALTH sign for video game headsets infringed its UK trade marks registered in relation to audio headsets for playing
    What's a website blocking order and why is it useful?
    • Jan 12
    • 2 min

    What's a website blocking order and why is it useful?

    Nintendo was granted an early Christmas present by the Honourable Mrs Justice Joanna Smith DBE - a website blocking order (Nintendo Co Ltd v British Telecommunications Plc & Ors). What is a website blocking order? The order requires the six biggest UK internet service providers (ISPs) to block access to two websites, NSW2U and NSWROM (as well as related sites) that provide links to sites offering pirate Nintendo Switch games. There has been a long history of website blocking
    Court of Appeal rules on liability and account of profits in trade mark case
    • May 28, 2021
    • 3 min

    Court of Appeal rules on liability and account of profits in trade mark case

    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 [2021] 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.
    Give this passing off case a butchers
    • May 8, 2021
    • 4 min

    Give this passing off case a butchers

    Passing off is often added as an afterthought to a trade mark infringement action. In those circumstances, it is very often successful. The line between a deception (required for passing off) and likelihood of confusion (trade mark infringement) is subtle but there is a significant degree of overlap between the two. However, where there is no registered mark and it is first necessary to establish goodwill in a particular name, logo or get up, the relevant deception is much mo
    MONOPOLY cannot last forever without regular use
    • 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
    Trade mark infringement claim upheld
    • 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
    Chanel and Huawei logos are dissimilar
    • 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
    Database extraction was authorised
    • 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
    Which IP rights subsist in an XML Schema?
    • 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
    Satan Shoes - Nike and the devil tussle over trade mark exhaustion
    • 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
    The straw that broke the camel's CRYPTOBACK? Trade mark survives validity challenge
    • 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
    Who owns copyright works that an employee creates at home?
    • Mar 9, 2021
    • 2 min

    Who owns copyright works that an employee creates at home?

    One of the highlights of the pandemic has been the opportunity to catch up on a lifetime's worth of TV. Fortunately, there are some truly great TV shows including the comedy Silicon Valley. It is not for nothing that this great TV show has been described as a documentary! It confronts many of the business issues that face the tech industry in the US and beyond. One of my favourite episodes is a mini courtroom drama (a binding arbitration, if we're going to be precise). The ep
    How do you win a fashion dispute? Find out why I love unregistered designs
    • Mar 7, 2021
    • 5 min

    How do you win a fashion dispute? Find out why I love unregistered designs

    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
    Why contracts are in writing: lessons from an oral trade mark co-existence agreement
    • Feb 22, 2021
    • 2 min

    Why contracts are in writing: lessons from an oral trade mark co-existence agreement

    A recent decision by the Intellectual Property Enterprise Court reveals the problems that can arise when businesses that once shared name fall out and do not have a clear agreement in place. The case covered 22 issues(!) in total, including copyright infringement, trade mark validity and infringement and passing off. Following a two-day trial in November, Deputy High Court Judge David Stone handed down his judgment on 18 January 2021. The case was brought by Cormeton Fire Pro
    Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon
    • Feb 22, 2021
    • 3 min

    Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

    When is an online marketplace “targeting” consumers in a particular jurisdiction? This was the question that Mr Justice Michael Green wrestled with in his judgment in Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch). The case involved trade mark infringement and passing off claims brought against Amazon regarding the sale of goods bearing the Beverly Hills Polo Club trade marks on amazon.com. The claimants are familiar faces in the English High
    Brands prosper despite business difficulties
    • Jan 29, 2021
    • 2 min

    Brands prosper despite business difficulties

    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 Janger Ltd v Tesco Plc
    • Jan 15, 2021
    • 2 min

    The Janger Ltd v Tesco Plc

    What does the fashion industry hang on? The Janger is designed for travel and holiday use (so probably isn't getting a lot of use at the moment!) Most fashion cases concern design right, copyright and trade marks. It is relatively unusual for patents and fashion to collide. The Janger Ltd v Tesco Plc [2020] EWHC 3450 (IPEC) (16 December 2020) was one of the last cases from 2020 and one of the few to look at patents and fashion. Janger had a patent for “A hangable garment hook
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    © 2021 by Rosie Burbidge​

    © 2018 in the cover image by Bernhard Deckert, photographer at bernieshoots.com of an ÏTTAG cosmos collection scarf ittag.uk

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    All content on this website is provided to help you learn more about the mystery and complexities of intellectual property law but it does not constitute legal advice. If you would like legal advice regarding any of the issues raised on this site, please contact Rosie: rosie.burbidge@gunnercooke.com 

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