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

Can confidential discussions between parties in the UK be disclosed in parallel litigation in the US? The Court of Appeal was divided on this question in AutoStore Technology AS v Ocado Group Plc & Ors [2021] EWCA Civ 1003, which arose as part of proceedings in which AutoStore is suing Ocado for patent infringement. Discussions between the parties had taken place in 2018, and Ocado became aware that AutoStore intended to deploy information about these discussions before the U

In what may be a record for an IP case in the UK, the trial in Lutec (UK) Ltd & Ors v Cascade Holdings Ltd & Anor [2021] EWHC 1907 (Pat) lasted just over an hour. In his judgment published on 9 July 2021, Deputy High Court Judge David Stone found that four registered designs were infringed by two outdoor light fittings, known as the Helios Up Or Down light (Helios U/D) and the Helios Up And Down light (Helios U&D). The judge attributed the rapid resolution to “thorough prepar

Oatly has hit a brick wall in its attempt to stop third parties from selling oat milk using the word "OAT" plus the letter "Y". A decision in the IP Enterprise Court (IPEC) that the use of the PUREOATY name does not infringe registered trade marks for OATLY demonstrates the difficulty of enforcing marks that include a descriptive element. The case is Oatly AB v Glebe Farm Foods. Swedish company Oatly brought the action for infringement of five registered EU (now comparable UK

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

We first wrote about the impact of Brexit on UK trade marks over a year ago. We are now over 6 months in since the UK's departure from the EU and rapidly approaching the end of the transitional arrangements. 30 September 2021 is the deadline for filing a new UK application and claiming priority from an earlier EU trade mark application. This only applies if the EU mark was filed on or before 31 December 2020. Other important changes Separate trade mark filings are now require

A common trade mark filing strategy in the UK and EU is to file a broad trade mark specification. A broad specification makes enforcement easier and allows room for the pivots that are common in new businesses. The down side of broad trade marks is that they block the register for future applicants. This issue has been put into the spotlight thanks to the longstanding litigation between Sky and SkyKick - previously discussed here. In the latest SkyKick judgment, the Court of

In a decision likely to be welcomed by owners of 3D trade marks, the EU General Court has ruled that the shape of Guerlain’s Rouge G lipstick “is uncommon for a lipstick and differs from any other shape existing on the market”. The Court reversed the Board of Appeal’s finding, and found the shape could be registered as an EU trade mark. Guerlain applied for an EU trade mark (pictured) in September 2018 for “lipsticks” in class 3. It was rejected by the examiner under Article

A recent decision of the EU General Court looks like good news for celebrities. The singer Miley Cyrus had applied to register her name as an EUTM, but the EUIPO Board of Appeal found that there was a likelihood of confusion with an earlier figurative registration for CYRUS (pictured). In its judgment on 16 June, the General Court reversed that finding (Case T-368/20). The Court found that it was uncontested that Miley Cyrus is well known and “a public figure of international

The UK IPO, at least, seems resistant to Wonder Woman’s superpowers, after it rejected DC Comics’ opposition to a trade mark application for WONDER MUM for goods such as soaps, perfumery and deodorants in class 3. The application was filed by consumer goods company Unilever on 17 December 2019. DC Comics objected to the WONDER MUM trade mark on three grounds: (1) likelihood of confusion under Section 5(2)(b) of The Act. This was based on DC Comics’ EU trade mark for WONDER WO

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 [2021] 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 [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.

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 [2021] 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