Citations: [2001] EWCA Civ 386 Links: Bailii Statutes: Trade Marks Act 1938 Jurisdiction: England and Wales Intellectual Property Updated: 31 May 2022; Ref: scu.147480
Section 11 and its predecessors were designed not so much for the protection of other traders in the use of their marks or to protect their reputation but for the protection of the public. The test of confusion in section 11 is not the same as the test for passing off. Lord Upjohn also said: … Continue reading BALI Trade Mark: 1969
IPO There has been a long running dispute between these two party’s dating back to the early 1980’s. The mark in suit was applied for on 28 June 1989 and was opposed by the current applicant all the way to the Court of Appeal, who allowed registration under Section 12 of the 1938 Trade Marks … Continue reading Budweiser (Trade Mark: Invalidity): IPO 2 Aug 2007
Application for registration without evidence of proprietary interest in the name. Citations: Ind Summary 28-Feb-1994 Statutes: Trade Marks Act 1938 17(1) Jurisdiction: England and Wales Intellectual Property Updated: 04 June 2022; Ref: scu.83216
The applicants sought registration of the trade mark ‘Reef’ in connection with merchandising activities in classes 25 and 26 arising from their pop group of the same name. The challengers owned a trade mark ‘Reef Brazil’ in class 25 in relation to footwear, and claimed that there was a risk of confusion, and that if … Continue reading South Cone Incorporated v Bessant, Greensmith, House and Stringer (a Partnership) trading as ‘Reef’; REEF Trade Mark: ChD 24 Jul 2001
The applicant sought to register the mark ‘BUD’ as a trade mark in class 32 for beer. Objection was made under section 11. The parties had each disputed previously the others sales of beers under the name ‘Budweiser’. Held: The opposition failed. The evidence showed that the use of Bud as a contraction for Budweiser … Continue reading BUD Trade Mark: 1988
1267 – 1278 – 1285 – 1297 – 1361 – 1449 – 1491 – 1533 – 1677 – 1688 – 1689 – 1700 – 1706 – 1710 – 1730 – 1737 – 1738 – 1751 – 1774 – 1792 – 1793 – 1804 – 1814 – 1819 – 1824 – 1828 – 1831 – 1832 … Continue reading Acts
Jacobs J considered the trade marks regulation of double registrations: ‘There is no provision of the Trade Marks Act 1938 which prevents the registration of a mark twice for the same goods by the same proprietor. There is no reason in public policy why that should not happen under the old Act, provided of course … Continue reading Origins Natural Resources Inc v Origin Clothing Ltd: 1995
The applicant had sought registration of the ‘Swiss Miss’ mark. Objection was raised on the ground that it was misleading in suggesting any connection with Switzerland. Held: The appeal succeeded as to some uses, but not in general. The court had a discretion to amend the registration, but should not do so in the absence … Continue reading Hunt-Wesson Inc v Chocosuise: CA 2 Jul 1998
IPO Opposition. – trade mark Judges: Mr G Salthouse Citations: 1568701 Links: IPO Statutes: Trade Marks Act 1938 29(1)(a) Jurisdiction: England and Wales Intellectual Property Updated: 15 September 2022; Ref: scu.275032
The opponent marketed baby food using the trade mark. The applicant sough revocation of the trade mark on the grounds of it not having been bona-fide used. Held: The Electrolux case did not establish that the mark owner had to establish commercial use on a substantial scale in addition to bona fide use. Section 26(1) … Continue reading Gerber Products Company v Gerber Foods International Ltd: ChD 18 Mar 2002
Trade Mark: Opposition Judges: S J Probert Citations: [1998] UKIntelP o01198 Links: Bailii Statutes: Trade Marks Act 1938 Jurisdiction: England and Wales Intellectual Property Updated: 06 July 2022; Ref: scu.453072
Parties appealed from decisions of the Trade Marks Registry, and requested leave to introduce new evidence. Held: It was not agreed what rules applied on appeals under the 1938 Act. The Trade Mark system had public interest effects as well as private law. The rules governing appeals were therefore different from other regimes. The courts … Continue reading E I Du Pont de Nemours and Co v S T Dupont (1): ChD 31 Oct 2002
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to minor exceptions involving the use of a company name, forbidden by section 4(1) of … Continue reading Vodafone Group Plc v Orange Personal Communications Services Ltd: ChD 1997
(New Zealand) The defendants appealed against an interlocutory injunction restraining them from use of a trade mark which was said to be infringing. The mark had not been used and was vulnerable to being removed, and Cussons applied for the removal of the mark. Unilever had in the mean time registered the same mark again … Continue reading Cussons (New Zealand) Pty Limited v Unilever Plc and others: PC 20 Nov 1997
Trade Marks. Citations: [1999] EWCA Civ 1766 Statutes: Trade Marks Act 1938 11 12 Jurisdiction: England and Wales Intellectual Property Updated: 30 May 2022; Ref: scu.146681
The House had to consider changes between the two Acts, and in particular the meaning of the phrase ‘in connection with’, and what sort of trade was relevant for the purposes of what the mark indicated, under the 1938 Act. Held: The respondents were not entitled to register RYSTA as a trade mark in respect … Continue reading Aristoc Ltd v Rysta Ltd: HL 1945
Romer J discussed the test to be applied under section 11: ‘[Counsel] submitted to me the following propositions with regard to this section: (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (or the Court) that there is no reasonable probability of confusion. (2) … Continue reading Re Jellinek’s Application: 1946
The applicant owned an American Trade Mark in the name ‘Holly Hobbie’. They sought to register the same mark here. Objection was made that the applicant intended to license the use of the mark to others, rather than use it itself, and would this be trafficking in the mark. Held: The appeal against refusal of … Continue reading In Re American Greetings Corporation’s Application: HL 26 Jan 1984
The parties disputed the use of the name Budweiser for the beers which each sold. Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and neither had achieved the reputation improperly and neither was making a misrepresentation. … Continue reading Anheuser-Busch v Budejovicky Budvar: CA 1984
(Malaysia) In 1972 the appellants were injured by the respondent’s bus. At that time the local limitation period was 12 months. In 1974 the limitation period became three years. The appellants issued a writ in 1975. To succeed they would have to sue under the 1974 Act. Held: The claim was time barred. The respondent’s … Continue reading Yew Bon Tew v Kenderaan Bas Mara: PC 7 Oct 1982
The claimant alleged complicity by the defendant, (now former) Foreign Secretary, in his mistreatment by the US while held in Libya. He also alleged involvement in his unlawful abduction and removal to Libya, from which had had fled for political persecution. The defendants now appealed from rejection of the defendants’ claim to state immunity and … Continue reading Belhaj and Another v Straw and Others: SC 17 Jan 2017
The claimant asserted that the defendant had infringed its goodwill in the name ‘Hot Picks’ the defendant argued that it was licensed to use the mark by the person who applied for its registration as a trade mark, and that the claim in passing off arose from the defendant’s own illegal act, and should be … Continue reading Inter Lotto (UK) Limited v Camelot Group Plc: ChD 6 Jun 2003
The defendants appealed convictions for contempt of court, on the basis of having wilfully interrupted the court. The respondent said that no appeal lay. Held: The statute was ambiguous, and ‘there can be no good reason why a person convicted under s.12 should not have a right of appeal against conviction as well as against … Continue reading Haw and Another v City of Westminster Magistrates’ Court: Admn 12 Dec 2007
Although the Commission is not competent to determine the scope of a patent, it is still the case that it may not refrain from all action when the scope of the patent is relevant for the purposes of determining whether there has been an infringement of article 85 or 86 of the treaty. Even in … Continue reading Windsurfing International v Commission: ECJ 25 Feb 1986
The defendant had been convicted of robbery. He appealed, saying that a member of the jury was a neighbour to his brother, and there was therefore a risk of bias. This was of particular significance as the defendant was charged with conspiracy with that brother to commit burglaries. The juror had sworn an affidavit that … Continue reading Regina v Gough (Robert): HL 1993
The parties had appeared before a hearing officer at the Trade Marks registry. The opponent of the registration sought leave to argue an additional point which, though unpleaded, could have been argued without any significant adjournment. The Officer declined leave. Held: The appeal succeeded. Justice indicated that in these circumstances, where no significant adjournment was … Continue reading E I Du Pont de Nemours and Co v S T Dupont (2): ChD 22 Nov 2002
