#trademark

Jan 12, 2022
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

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

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

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

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

Sep 2, 2021
1 min

The post-Brexit clock is ticking - don't miss out!

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

Aug 5, 2021
3 min

SKY brings good news for broad trade marks

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

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

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

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 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

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

European Fashion Law