#intellectualproperty

Feb 27, 2022
2 min

China joins the Hague System

China has been steadily overhauling its IP system for well over a decade. Last week, in the latest development, China joined WIPO’s Hague System for the International Registration of Industrial Designs bringing the total number of countries covered by the Hague System to 94. China is the largest market that remained outside of the Hague System until now. The EU, US, UK and Japan are all already members and the system is increasingly popular: the number of designs applied for

Feb 27, 2022
2 min

When does an arbitration clause apply to trade mark infringement proceedings?

The Court of Appeal recently found that a company which had acquired the BEVERLY HILLS POLO CLUB trade marks was bound by an arbitration clause in an agreement signed by its predecessor. More details on the first instance decision are here. The case is Lifestyle Equities CV & Anor v Hornby Street (MCR) Ltd & Ors [2022] EWCA Civ 51. What happened? Lifestyle Equities acquired the UK and EU trade marks for BEVERLY HILLS POLO CLUB in 2009. It subsequently sought to bring an actio

Feb 27, 2022
2 min

What is the Unitary Patent and why does it matter to you?

The unitary patent represents the biggest change to the IP landscape in Europe since the Community Trade Mark (now EUTM). Even if you’re not in a patent heavy industry, it has significant potential ramifications. Currently patents are granted on a country by country basis. Under the new system, a patent applicant will have the option to apply for a “unitary patent" or "UP” designation which means their patent will be granted as a single right across all UP states. This means

Feb 27, 2022
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

Feb 27, 2022
2 min

What do you think of the UK designs system?

The UK Intellectual Property Office (UKIPO) has launched a call for views on the designs system. It says this will “help us better understand how we can make the most of new opportunities and flexibilities now that we have left the EU, and how new and emerging technologies may impact the design system.” Call for views The call for views seeks evidence on three main areas: (1) new opportunities, (2) future frameworks and (3) better regulation. It runs for eight weeks, closing

Jan 29, 2022
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

Jan 29, 2022
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

Jan 12, 2022
1 min

What are the IP issues facing luxury businesses in the UK?

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

Nov 20, 2021
2 min

A Christmas miracle: Designs, confidential information and contracts

What connects Leonardo Da Vinci, a Christmas miracle and the possible award of exemplary damages? The answer lies in a recent High Court judgment by Mr Justice Jacobs (Salt Ship Design AS v Prysmian Powerlink SRL). The case concerned designs for a cable lay vessel produced by Salt Ship Design for Prysmian. The judge found that Prysmian (a company with annual revenue of €10 billion) had made the designs available to another designer, Vard Design AS, which was associated with t

Nov 20, 2021
2 min

When can Parts of a Ferrari be protected as Unregistered Designs?

When can component parts of a product be protected as unregistered Community designs (UCDs)? The Court of Justice of the EU (CJEU) recently answered that question in a case concerning design rights in a Ferrari car (Case C-123/20). The case, which was before the German Federal Court of Justice (BGH) related to the Ferrari FXX K model, presented to the public in December 2014 (pictured). Ferrari alleged that Mansory Design (and Mansory’s CEO) infringed its UCDs by marketing ki

Nov 5, 2021
3 min

Therapists go to court over ARCHANGEL ALCHEMY mark

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

Nov 5, 2021
1 min

The United Arab Emirates to join the Madrid System

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

Nov 5, 2021
2 min

'Green' trade marks on the rise

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

Oct 4, 2021
2 min

Unreasonable behaviour leads to IPEC costs award

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

Oct 4, 2021
2 min

A rotten judgment for John Lydon

Who has the power to control the use of the Sex Pistols IP rights? That was essentially the question decided by Sir Anthony Mann in Jones & Anor v Lydon & Ors, a decision of the High Court in August 2021. Most of the former band members want to give permission for use of its music in a planned TV series directed by Danny Boyle, but John Lydon (Johnny Rotten) opposes that permission. Two of the band members brought the action, seeking to enforce an eight-paragraph 1998 Band Me

Oct 4, 2021
2 min

Moral rights claim bound to fail

Moral rights disputes don’t come to court very often, so Mrs Justice O’Farrell’s judgment in The Front Door (UK) Lt (t/a Richard Reid Associates) v The Lower Mill Estate Ltd makes for interesting reading. The particular hearing concerned various applications arising in a case over the development of "Silverlake", a holiday village in Weymouth. The claimant (The Front Door, trading as Richard Reid Associates) is an architectural practice and the defendant (The Lower Mill Esta

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 27, 2021
2 min

Court of Appeal divided over disclosure

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

Sep 27, 2021
2 min

Speedy justice in design case

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

Sep 2, 2021
3 min

Descriptive marks beware: Judge rejects Oatly trade mark case

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

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