Archive for the 'trade marks' Category

Transport directory infringed Yellow Pages trade marks, court finds – OUT-LAW.com

“The use of ‘yellow pages’ in the domain http://www.transport-yellow-pages.com breached trade mark regulations, a court has ruled. A person finding the website in the UK could think it belonged to Yell, the England and Wales Patent County Court said.”

Full story

OUT-LAW.com, 14th April 2011

Source: www.out-law.com

Community trade mark court rulings should apply across the EU, ECJ rules – OUT-LAW.com

“Rulings by Community trade mark courts should in most cases apply across the EU and not just in the country in which they were made, the European Court of Justice (ECJ) has said.”

Full story

OUT-LAW.com, 13th April 2011

Source: www.out-law.com

Ineos Healthcare Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Teva Pharmaceutical Industries Ltd, other party) – WLR Daily

Ineos Healthcare Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Teva Pharmaceutical Industries Ltd, other party) (Case T-222/09); [2011] WLR (D) 53

“In opposition proceedings against registration of a trade mark pursuant to article 42 of Council Regulation (EC) No 40/94, the opposing party was not obliged to adduce evidence in support of the opposition. Whilst in relation to proceedings relating to relative grounds for refusal the Board of Appeal of the Office of Harmonisation in the Internal Market (Trade Marks and Designs) could take into account facts which were likely to be known by anyone or which might be learned from generally accessible sources, it was not, however, entitled to exceed the conditions governing examination set out in article 74 of Regulation 40/94.”

WLR Daily, 23rd February 2011

Source: www.lawreports.co.uk

Please note that once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Trademark law: bar is lowered for claims of infringement – The Guardian

“The US doctrine of ‘initial interest confusion’ applies in England, a court has decided.”

Full story

The Guardian, 29th October 2010

Source: www.guardian.co.uk

High Court confirms ‘initial confusion’ as principle of EU trade mark law – OUT-LAW.com

“Trade mark infringement can take place even if a buyer is only confused about one company appearing to be another at the very start of the purchasing process, the High Court has ruled.”

Full story

OUT-LAW.com, 26th October 2010

Source: www.out-law.com

Och-Ziff Management Europe Ltd and another v OCH Capital LLP and others – WLR Daily

Och-Ziff Management Europe Ltd and another v OCH Capital LLP and others [2010] EWHC 2599 (Ch) ; [2010] WLR(D) 265

“Purely internal use of a trade mark by its proprietor was not ‘genuine use’ of that mark and that internal use was not ‘use’ of a mark as a trade mark at all. It was not use as part (or even preparatory to) a commercial communication with a third party.”

WLR Daily, 25th October 2010

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Court of Appeal questions brand owners’ rights to block parallel imports – OUT-LAW.com

“Brand owners may have less power to prevent sales in Europe of goods intended for other markets after a ruling by England’s Court of Appeal this week. The judgment over the sale of Sun-branded disk drives is likely to be welcomed by independent resellers.”

Full story

OUT-LAW.com, 26th August 2010

Source: www.out-law.com

Google to allow trade marks as keywords across Europe – OUT-LAW.com

“Google will let companies use competitors’ trade marks as keywords to trigger search adverts in all European countries for the first time. The move will test the interpretation of a number of EU and national court rulings on the controversial practice.”

Full story

OUT-LAW.com, 4th August 2010

Source: www.out-law.com

L’Oréal SA and others v Bellure NV and others – WLR Daily

L’Oréal SA and others v Bellure NV and others [2010] EWCA Civ 535; [2010] WLR (D) 134

“The effect of the ruling of the Court of Justice of the European in L’Oréal SA v Bellure NVs (Case C-487/07) [2010] Bus LR 303 was that the use of comparative lists, whereby traders of smell-alike perfume products cited, for marketing purposes, the products in the market to which their own products smelt similar, was unlawful.”

WLR Daily, 24th May 2010

Source: www.lawreports.co.uk

Please note once a case has been reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Man fined £26k over fake computer games – BBC News

“A man who sold fake computer games over the internet has been ordered to pay £26,405 following a proceeds of crime investigation.”

Full story

BBC News, 12th May 2010

Source: www.bbc.co.uk

Hotel Cipriani Srl and others v Cipriani (Grosvenor Steet) Ltd and others – WLR Daily

Hotel Cipriani Srl and others v Cipriani (Grosvenor Steet) Ltd and others [2010] EWCA Civ 110; [2010] WLR (D) 64

“The ‘own name’ defence under art 12(a) of Council Regulation (EC) 40/94, whereby a community trade mark did not entitle the proprietor to prohibit a third party from using in the course of trade his own name and address, could be available in respect of a trading name, as well as a corporate name of a company, but it would depend on: (i) the actual trading name that had been adopted; (ii) the circumstances in which it had been adopted; and (iii) depending on the circumstances, whether the use was in accordance with honest practices.”

WLR Daily, 4th March 2010

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Village People threaten lawsuit over Jamie Oliver advert – The Guardian

“It could make for an interesting scenario: a construction worker, a cowboy, a traffic cop, a Native American chief, a sailor, Jamie Oliver, a leather queen, some lawyers and a judge – together in court.”

Full story

The Guardian, 18th December 2009

Source: www.guardian.co.uk

Firms settle trademark dispute – Law Society’s Gazette

“Nottingham firm Paragon Law has forced West Bromwich and Peterborough firm Paragon Solicitors to change its name and pay legal costs after a trade mark dispute.”

Full story

Law Society’s Gazette, 5th November 2009

Source: www.lawgazette.co.uk

Ferrero SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) – WLR daily

Ferrero SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-140/08); [2009] WLR (D) 308

“In proceedings concerning the alleged invalidity of a community trade mark, departments of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) are not bound by earlier final decisions in opposition proceedings, since no force of res judicata attaches to such decisions.”

WLR Daily, 29th October 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

 

Food mixer did not violate rival’s trade mark by using similar shape – OUT-LAW.com

“A claim that one food mixer violated the trade mark rights of another by being similar in shape has failed. The Court of Appeal said that any similarity in shape between the machines had not given Kenwood an unfair advantage over Whirlpool.”

Full story

OUT-LAW.com, 31st July 2009

Source: www.out-law.com

Britain’s biggest DVD pirates jailed – The Guardian

“A father and his two sons who kept dozens of Chinese workers in virtual slavery to run Britain’s biggest DVD piracy operation were jailed for a total of 16 years today.”

Full story

The Guardian, 28th July 2009

Source: www.guardian.co.uk

L’Oréal SA and others v Bellure NV and others – WLR Daily

L’Oréal SA and others v Bellure NV and others (Case C-487/07); [2009] WLR (D) 203

“The claimants, producers and marketers of luxury perfumes, were the proprietors in the United Kingdom of well-known trade marks, some in the form of word marks alone, and others being word and figurative marks including a representation of the bottle or packaging for the particular perfume. The defendants, the producer of and two companies which marketed imitations of fine fragrances, offered a range of products some of whose bottles and packaging were generally similar to those of products of the claimants’, although it was common ground that the similarity was unlikely to mislead professionals or the public. The defendant marketing companies provided to their retailers lists which compared the smell of a product of the defendants’ with a product of the claimants’ which was being imitated, in each case identified by reference to the word mark by which the product was known. In trade mark infringement proceedings brought by the claimants, a number of issues arose relating to the interpretation of (i) Council Directive 89/104/EEC on trade marks and (ii) article 3a(1) of Council Directive 84/450/EEC on misleading and comparative advertising as amended by European Parliament and Council Directive 97/55/EC (‘Directive 84/450’), and the Chancery Division of the High Court referred questions thereon to the European Court of Justice for a preliminary ruling.”

WLR Daily, 19th June 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH – WLR Daily

Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Case C-529/07); [2009] WLR (D) 182

“The fact that, at the time of applying for registration of a sign as a trade mark, the applicant knew or was to be taken as knowing that an identical or similar sign capable of being confused with the applicant’s sign was being used by others for an identical or similar product, could constitute bad faith on the applicant’s part rendering the registration amenable to a declaration of invalidity.”

WLR Daily, 12th June 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

LastMinute.com wins right to block last minute trade mark – OUT-LAW.com

“Online travel company LastMinute.com has won the right to have a competing firm’s European trade mark cancelled. The European Union’s Court of First Instance (CFI) has backed the British firm, overturning a ruling by the EU office for trade marks.”

Full story

OUT-LAW.com, 11th June 2009

Source: www.out-law.com

EBay has ‘no legal duty’ to protect others’ trade marks, says High Court – OUT-LAW.com

“Online auction site eBay has ‘no legal duty’ to protect other companies’ trade marks or stop its sellers from infringing them, the High Court has said.”

Full story

OUT-LAW.com, 26th May 2009

Source: www.out-law.com

ECJ rulings on Google keywords might not resolve controversy, warns High Court – OUT-LAW.com

“A widely-requested European Court of Justice (ECJ) ruling on keyword advertising may fail to give businesses in the UK and Ireland the legal clarity it would give to the rest of Europe, a High Court judge has warned.”

Full story

OUT-LAW.com, 26th May 2009

Source: www.out-law.com

Regina v Kousar – Times Law Reports

Regina v Kousar

Court of Appeal (Criminal Division)

“A wife who knew her husband was storing business merchandise in the matrimonial home, acquiesced in it being there and did not demand its removal, was not in control or possession of the goods.”

The Times, 25th March 2009

Source: www.timesonline.co.uk

Please note the Times Law Reports are only available free on Times Online for 21 days from the date of publication.

Mastermind of Britain’s biggest stolen car ‘ringing’ scam jailed – Daily Telegraph

“The mastermind behind Britain’s biggest stolen car ‘ringing’ operation, worth more than £38 million, has been jailed for six-and-a-half years.”

Full story 

Daily Telegraph, 12th March 2009

Source: www.telegraph.co.uk

UK trade mark fees will fall, says IPO – OUT-LAW.com

“The cost of registering trade marks in the UK will fall under plans proposed by the Intellectual Property Office (IPO). The move is a response to reduced EU trade mark prices and to falling demand for marks.”

Full story

OUT-LAW.com, 10th March 2009

Source: www.out-law.com

L’Oreal in High Court battle with eBay – Daily Telegraph

“L’Oreal, the cosmetics giant, has begun a High Court action over the sale of fake fragrances and cosmetic products on eBay.”

Full story

Daily Telegraph, 10th March 2009

Source: www.telegraph.co.uk

Essex Trading Standards v Singh – WLR Daily

Essex Trading Standards v Singh; [2009] WLR (D) 81

In order to acquit a defendant of a charge of unauthorised use of registered trade marks in relation to goods, contrary to s 92(1)(c) of the Trade Marks Act 1994, under the statutory defence provided by s 92(5) of the Act, it was not enough for the court to conclude on the facts that the defendant had acted in the honest belief that the use of the signs was not an infringement of the registered trade marks; it was also necessary to find that he had reasonable grounds for so believing.”

WLR Daily, 4th March 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

R v Kousar – WLR Daily

R v Kousar [2008]; [2009] WLR (D) 16

A wife who shared the matrimonial home with her husband, whom she knew was storing merchandise from his business at home, but acquiesced in it being there and did not demand he remove it, was not in control or possession of the goods within the meaning of s 92(1)(c) of the Trade Marks Act 1994.”

WLR Daily, 22nd January 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Branded promotional items do not use trade marks, says ECJ – OUT-LAW.com

“The use of a word or phrase in relation to free promotional items is not ‘genuine trade mark use’  under EU laws, the European Court of Justice (ECJ) has said.”

Full story

OUT-LAW.com, 20th January 2009

Source: www.out-law.com

Silberquelle GmbH v Maselli-Strickmode GmbH – WLR Daily

Silberquelle GmbH v Maselli-Strickmode GmbH (Case C-495/07); WLR(D) 6

Where the proprietor of a trade mark affixed the mark to items that it gave free of charge to purchasers of its goods, it did not make genuine use of the mark so far as those items were concerned, for the purpose of, inter alia, art 12(1) of Directive 89/104.”

WLR Daily, 16th January 2009

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Intel Corpn Inc v CPM United Kingdom Ltd – WLR Daily

Intel Corpn Inc v CPM United Kingdom Ltd (Case C-252/07); [2008] WLR (D) 371

A national court, considering an invalidity application brought by the proprietor of a registered trade mark with a reputation, had to take into account all the factors relevant to the circumstances of the case. Those factors included the fact that, for an average consumer who was reasonably well informed and observant a later trade mark called an earlier mark with a reputation to mind, was in principle tantamount to the establishment of such a link between the conflicting marks. But an absence of similarity between the product areas concerned could not be taken to imply the absence of such a link. Belief in an economic connection between the marks was not a necessary criterion.”

WLR Daily, 27th November 2008

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

Intel ruling sets tough dilution test for owners of famous brands – OUT-LAW.com

“The owner of a famous trade mark can stop a similar mark being used for completely different goods and services but must show that the new mark will have an economic impact on consumers to its detriment, the European Court of Justice has ruled.”

Full story

OUT-LAW.com, 28th November 2008

Source: www.out-law.com

Intel ruling restricts legal protection for famous brands – The Times

“Companies will find it harder to protect well-known brands from being exploited by other businesses following a landmark ruling by Europe’s highest court today.”

Full story

The Times, 27th November 2008

Source: www.timesonline.co.uk

Trade mark owner loses domain name claim against unauthorised reseller – OUT-LAW.com

“Dealers and resellers can use a manufacturer’s trade mark as a domain name even when their sales are not authorised by the manufacturer, an arbitration panel has ruled.”

Full story

OUT-LAW.com, 19th November 2008

Source: www.out-law.com

Fake audiobook seller jailed – The Independent

“A man who conned people with counterfeit audiobooks, including the best-selling Harry Potter tales, was today jailed for 21 months.”

Full story

The Independent, 20th November 2008

Source: www.independent.co.uk

Defence of poor quality trade mark reproduction rejected by Court of Appeal – OUT-LAW.com

“A man has tried to overturn a conviction by claiming that he could not have infringed a trade mark because his copy of it was so poor. Gary Boulter has been refused permission to appeal his conviction of criminal trade mark infringement.”

Full story

OUT-LAW.com, 30th October 2008

Source: www.out-law.com

Radio and drinks firms battle over rights to the word ‘absolute’ – OUT-LAW.com

“A vodka maker is suing a radio station over its use of the name ‘absolute’. Virgin Radio was recently renamed Absolute Radio, but V&S Vin & Spirit, which is behind vodka brand Absolut, claims that the use of the name is a trade mark violation.”

Full story

OUT-LAW.com, 14th October 2008

SOurce: www.out-law.com

Trade mark owners will need greater vigilance from October – OUT-LAW.com

“Trade mark owners will have to be more vigilant than ever in protecting their marks from the beginning of next month when new trade mark laws come into effect. The change is expected to increase demand for brand monitoring services.”

Full story

OUT-LAW.com, 8th September 2008

Source: www.out-law.com

esure Insurance Ltd v Direct Line Insurance plc – Times Law Reports

esure Insurance Ltd v Direct Line Insurance plc

Court of Appeal

“An expert’s report was of little value in evaluating the likelihood of trade-mark confusion from the standpoint of a consumer.”

The Times, 5th September 2008

Source: www.timesonline.co.uk

Please note the Times Law Reports are only available free on Times Online for 21 days from the date of publication.

Judge says expert witnesses are rarely useful for trade mark disputes – OUT-LAW.com

“A judge has said that expert evidence in trade mark disputes is rarely likely to be relevant when it comes to deciding if a consumer will be confused by two supposedly similar marks.”

Full story

OUT-LAW.com, 30th July 2008

Source: www.out-law.com

esure Insurance Ltd v Direct Line Insurance plc – WLR Daily

esure Insurance Ltd v Direct Line Insurance plc [2008] EWCA Civ 842; [2008] WLR (D) 252

“Since a trade mark case which raised the critical issue of confusion would be assessed from the viewpoint of the average consumer, the cogency of the evidence of an expert as to his own opinion, where the tribunal was in a position to form its own view, was in real doubt. The facts spoke for themselves. Consumer surveys were costly to produce and their results, when based upon the wrong questions, of no evidential value. To be commended was the practice of giving case management directions at an interim stage which required the parties to seek directions of the court (which could be given in advance of the trial) as to any proposed survey that the parties might wish to put in evidence at trial.”

WLR Daily, 24th July 2008

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

O2 Holdings Ltd and another v Hutchison 3G UK Ltd (Case C-533/06) – WLR Daily

O2 Holdings Ltd and another v Hutchison 3G UK Ltd (Case C-533/06); [2008] WLR (D) 193

“A registered trade mark proprietor (“proprietor”) could not rely on his trade mark rights to prevent the use of a sign similar or identical to his mark in a comparative advertisement if all the requirements for comparative advertising set out in Council Directive 84/450/EEC on comparative advertising, as amended, were satisfied, and, in particular, the use was not likely to give rise to confusion on the part of the public.”

WLR Daily, 16th June 2008

Source: www.lawreports.co.uk

Please note once a case has been fully reported in one of the ICLR series the corresponding WLR Daily summary is removed.

O2 Holdings Ltd and Another v Hutchison 3G UK Ltd – Times Law Reports

O2 Holdings Ltd and Another v Hutchison 3G UK Ltd

Court of Justice of the European Communities

“The proprietor of a trademark was not entitled to prevent the use by a competitor of a sign identical or similar to his mark in a comparative advertisement, provided, inter alia, that there was no risk of confusion on the part of the public between the proprietor and the competitor or between their respective goods or services.”

The Times, 17th June 2008

Source: www.timesonline.co.uk

Please note the Times Law Reports are only available free on Times Online for 21 days from the date of publication.

O2’s bubble bursts as it loses trademark case – The Times

“O2, the British mobile operator, has lost its four-year battle with rival 3 over the use of its bubble trademark in a television advertisement.”

Full story

The Times, 12th June 2008

Source: www.timesonline.co.uk

Acceleration of trade mark process is welcomed – OUT-LAW.com

“A proposal to shorten the period during which trade mark applications can be opposed will make the Government’s separate new fast-track trade mark process more appealing, one expert has said.”

Full story

OUT-LAW.com, 3rd April, 2008

Source: www.out-law.com

Wordsworth’s village bakers fight over their gingerbread – The Observer

“The tranquil village of Grasmere has long drawn visitors seeking out the serene Lakeland setting that inspired William Wordsworth. But the peace of this small community has been shattered as a battle rages over its most famous commodity, Grasmere Gingerbread.”

Full story

The Observer, 23rd March 2008

Source: http://observer.guardian.co.uk

Yahoo! wins sponsored links ruling in High Court – OUT-LAW.com

“Yahoo! did not infringe a businessman’s rights by displaying adverts for other companies when users entered his trade marks as search terms. The High Court dismissed a lawsuit against the web giant as being ‘totally without merit.'”

Full story

OUT-LAW.com, 6th March 2008

Source: www.out-law.com

Government consults on Trade Mark Rules – OUT-LAW.com

“The Government wants to change the rules on the registering of trade marks to encourage more people to register marks. It has launched a consultation on the changes.”

Full story

OUT-LAW.com, 4th March 2008

Source: www.out-law.com

Mr Loophole patents his nickname – The Times

“Nick Freeman, lawyer and hero to scores of terrible drivers, has trademarked his nickname to ensure that no one else can move in on his niche as the celebrity world’s ‘Mr Loophole’.”

Full story

The Times, 6th February 2008

Source: www.timesonline.co.uk

Rivals entitled to use O2’s bubbles – The Times

“An adviser to the Europe’s highest court recommended it reject a complaint by British phone company O2 against a rival that used its bubbles logo in a television advertising campaign.”

Full story

The Times, 31st Janaury 2008

Source: www.timesonline.co.uk

Trade mark fast-track launched, but value questioned – OUT-LAW.com

“Trade mark applicants will soon be able to pay an extra £300 to be fast-tracked through the system, but one expert has said that the new plan will only shave a few weeks from a process that can take years.”

Full story

OUT-LAW.com, 15th January 2008

Source: www.out-law.com

Dentists defeat fashion giant that cried “snap” over croc logo – The Times

“It was a battle that pitted a dental practice in the suburbs of Cheltenham against the might of a global fashion corporation – all because of the grinning crocodile on the surgery’s sign. And the dentists have won. For the second time in a year, a trademark judge has overruled the objections of the French clothing giant Lacoste to the crocodile symbol that adorns a private dentist’s surgery in Gloucestershire.”

Full story

The Times, 3rd January 2008

Source: www.timesonline.co.uk

Kitfix Swallow Group Ltd v Great Gizmos Ltd – Times Law Reports

Kitfix Swallow Group Ltd v Great Gizmos Ltd

“Where English trademark proceedings, in which there was a counterclaim for revocation, were running concurrently with validity proceedings in the Office for the Harmonisation in the Internal Market, there was no presumption that the English proceedings would be stayed.”

The Times, 19th December 2007

Source: www.timesonline.co.uk

Please note the Times Law Reports are only available free on Times Online for 21 days from the date of publication.

Making a mark may be easier – The Times

“Trademark law changed yesterday morning. Given the importance of brands these days, this development could be very significant. Edward Fennell reports.”

Full story

The Times, 2nd October 2007

Source: www.timesonline.co.uk

Consultation on fast track processing of Patents & Trade Marks – UK Intellectual Property Office

“The Gowers Report on Intellectual Property recommended that the UK Intellectual Property Office provide new accelerated services for processing patent and trade mark applications. We have considered these recommendations and are now consulting on proposed new fast track services for patents and trade marks, both of which will be available to all applicants upon payment of a fee.”

Consultation Document (pdf and Word)

UK Intellectual Property Office, 21st September 2007

Source: www.ipo.gov.uk

UKIPO offers trade mark rule change guidance – OUT-LAW.com

“The UK Intellectual Property Office will be offering advice and practical help on forthcoming changes to the Trade Marks Act in a series of events being held around the country this September.”

Full story

OUT-LAW.com, 22nd August 2007

Source: www.out-law.com


December 2020
M T W T F S S
 123456
78910111213
14151617181920
21222324252627
28293031  

Categories