#passingoff

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

Jul 3, 2021
2 min

A jewel by any other name... passing off in the jewellery world

Miss Recorder Amanda Michaels, sitting as a judge in the IPEC, has upheld a claim for passing off in a dispute between two jewellery designers. The claim was brought by Alyssa Smith Jewellery Limited, founded by Alyssa Smith, against Alisa Goodstone, who trades as Alyssa Jewellery Design. Ms Smith has operated a business since 2009, including via the websites www.alyssa-smith.com and (later) www.alyssasmith.co.uk as well as using the Twitter handle @AlyssaJewellery. She claim

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.

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

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

Mar 7, 2021
1 min

Image protection in the UK and beyond

Image rights are both hugely important and a fallacy. The UK, has no specific law of "image rights" but it is possible to protect a person's image through a patchwork of laws including passing off, trade marks, data protection and privacy. Rosie has contributed a chapter on the UK approach to image rights for Imagen y Derecho de la Moda, a South American Year Book which is available for purchase here! Rosie's article (which is translated into Spanish) provides an overview of

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

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

Feb 2, 2021
3 min

Passing off vs US law contract - guess which eagle wins?

Mr Justice Miles’s judgment in Lyle & Scott Limited v American Eagle Outfitters, Inc is an important decision for international fashion brands. The two companies use very similar eagle logos (pictured) for clothing that is sold through similar marketplaces in the UK and internationally. Lyle & Scott (L&S) is a long-standing British high-end fashion brand. It historically made golf clothes but by 2019 around half of its sales were polo shirts and T-shirts which are sold throu

European Fashion Law