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Re Trade Marks Act 1994 Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 20 Jun 2003

A case had been referred to the court as to the interpetation of the articles in the Directive. The court replied asking whether the subsequent Ansul judgement answered the questions raised.
Held: By agreement with the parties, only one of the . .

Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013

Mark use in search engine was infringing use The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use. … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013

Prebble v Television New Zealand Ltd: PC 27 Jun 1994

(New Zealand) The plaintiff, an MP, pursued a defamation case. The defendant wished to argue for the truth of what was said, and sought to base his argument on things said in Parliament. The plaintiff responded that this would be a breach of Parliamentary privilege. Held: A Defendant may not use libel proceedings to impugn … Continue reading Prebble v Television New Zealand Ltd: PC 27 Jun 1994

UK Registered Trade Marks Nos 1338514 (in Class 5) and 1402537 (in Class 3) in the name of Laboratories Goemar SA and Applications for Revocation thereof Nos 10073 and 10074 by La Mer Technology Inc: ChD 19 Dec 2001

The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the . .

Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

References: [2006] UKIntelP o22406 Links: Bailii Coram: Mrs J Pike ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed The applicant in these proceedings is the owner of a number of registered marks (UK & CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc … Continue reading Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006

Acts

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

Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd: QBD 15 Jul 2009

The claimant said that the defendant’s characterisation of its own products as ‘Good for You’ by reference to a description saying that it did not include the claimant’s product as a component, was a malicious falsehood. The defendant sold other products which did include Aspartame. The court was asked to determine the meanings. Held: The … Continue reading Ajinomoto Sweeteners Europe Sas v Asda Stores Ltd: QBD 15 Jul 2009

Sunrider Corporation (T/A Sunrider International) v Vitasoy International Holdings Ltd: ChD 22 Jan 2007

An application had been made to have the trade mark declared invalid. The owner replied saying that the five year period during which a mark might be challenged had expired. Held: The five year period commenced not from the date when the application for registration of the mark was made, but from the date when … Continue reading Sunrider Corporation (T/A Sunrider International) v Vitasoy International Holdings Ltd: ChD 22 Jan 2007

Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and An: ChD 8 Jul 1999

The affixing of a UK Trade Mark to packaging materials in the UK on the basis that the materials were to be exported before being affixed, to goods which outside the UK would not be infringing was not unlawful. Times 08-Jul-1999 Trade Marks Act 1994 10 (4) (a) England and Wales Intellectual Property Updated: 31 … Continue reading Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and An: ChD 8 Jul 1999

D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas: Chd 25 Jan 2008

The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an indication of origin. Held: The evidence established that the design was seen … Continue reading D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas: Chd 25 Jan 2008

Thomas Pink Limited v Victoria’s Secret UK Ltd: ChD 31 Jul 2014

The claimant alleged infrngement of its trade mark. The defendant replied that the mark had not been reproduced exactly. And was invalid. Held: The claim succeeded. The difference was not sufficient to amount to a defence where the alteration did not change the essential and distinctive characteri of the mark. proprietor of a registered trade … Continue reading Thomas Pink Limited v Victoria’s Secret UK Ltd: ChD 31 Jul 2014

Global Projects Management Ltd v Citigroup Inc and Others: ChD 17 Oct 2005

GPM had acquired an internet domain name ‘citigroup.co.uk’. Citigroup alleged passing off and trade mark infringement. The claimant complained of an unjustified threat. The defendant counterclaimed, and sought summary judgment. Held: The claimants registered the domain name on the very day that the merger creating the defendant happened. The reputation to be protected was in … Continue reading Global Projects Management Ltd v Citigroup Inc and Others: ChD 17 Oct 2005

Emaco Limited, Aktiebolaget Electrolux v Dyson Appliances Ltd: PatC 26 Jan 1999

A company which was using a competitor’s trade mark in the context of an advert, which made misleading and derogatory comparisons, failed the ‘honest practice’ test, and was abusing the rights to use the other company’s mark under the Act. In this case however each party was guilty of such failures. Times 08-Feb-1999, Gazette 17-Feb-1999, … Continue reading Emaco Limited, Aktiebolaget Electrolux v Dyson Appliances Ltd: PatC 26 Jan 1999

Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012

The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding information which would allow it to trade lawfully. The Court was now asked: ‘whether a person who … Continue reading Oracle America Inc v M-Tech Data Ltd: SC 27 Jun 2012

Regina v Johnstone: HL 22 May 2003

The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act could become criminal. The prosecutor appealed the decision of … Continue reading Regina v Johnstone: HL 22 May 2003

Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002

The trade mark owners sought to restrain the defendants from selling within the EU, articles bearing their mark which had been imported other than through their own channels. The defendants resisted summary judgement after reference to the European Court of Justice, on the grounds that the Regulation was invalid as infringing a basic tenet of … Continue reading Levi Strauss and Co and Another v Tesco Stores Ltd and others: ChD 31 Jul 2002

Quinton v Peirce and Another: QBD 30 Apr 2009

One election candidate said that another had defamed him in an election leaflet. Additional claims were made in injurious falsehood and under the Data Protection Act. Held: The claim in defamation failed. There were no special privileges in defamation attaching to election materials. However the claimant had not been able to establish any malice. The … Continue reading Quinton v Peirce and Another: QBD 30 Apr 2009

Kousar, Regina v: CACD 21 Jan 2009

The husband had been convicted of various criminal offences including under the 1994 Act. The wife appealed against her conviction for unauthorised use of a trade mark, having allowed counterfeit goods to be stored in the matrimonial home. Held: The appeal succeeded. The authorities referred to by the crown were attempts to draw parallels with … Continue reading Kousar, Regina v: CACD 21 Jan 2009

Bhayani and Another v Taylor Bracewell Llp: IPEC 22 Dec 2016

Distinction between reputation and goodwill The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, alleging passing off, and requesting revocation of the associated trade … Continue reading Bhayani and Another v Taylor Bracewell Llp: IPEC 22 Dec 2016

Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl: ChD 8 Jul 2010

The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar style, and opposed the application, refering to its existing registrations. The claimants had proposed a co-existence agreement, … Continue reading Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl: ChD 8 Jul 2010

Essex Trading Standards v Singh: Admn 3 Mar 2009

The defendant had been accused of selling counterfeit trainer shoes. The prosecutor appealed against dismissal of the prosecution on the basis that the defenant had not known that they were counterfeit. Held: The onus of proof lay on the defendant to establish on objectively reasonable grounds that these were genuine goods. No reasonable bench could … Continue reading Essex Trading Standards v Singh: Admn 3 Mar 2009

Lewis v Client Connection Ltd: ChD 6 Jul 2011

The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds from banks. The claimant sought summary judgment. Held: The defence as filed proposed no real defence,merely putting the claimant … Continue reading Lewis v Client Connection Ltd: ChD 6 Jul 2011