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 . .
[2014] UKIntelP o08014 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 02 December 2021; Ref: scu.523940
[2013] UKIntelP o24313 Bailii Trade Marks Act 1994 592)(b) Intellectual Property Updated: 23 November 2021; Ref: scu.517126
[2014] UKIntelP o28514 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 12 November 2021; Ref: scu.534587
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
(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
IPO Ex Parte. . .
An award of damages for misrepresentation required that there had at some time been a right of rescission, not necessarily a continuing right to rescind.
An acknowledgement of non-reliance clause has become a common part of modern commercial . .
IPO Trade Mark: Revocation – no use made of the mark by owner. . .
Trade Mark: Rectification . .
The Hearing Officer commented upon the stylization of the mark as advertised – with a lowercase ‘i’ and noted that this appeared to be at odds with the mark depicted on the application form. However, nothing turned on this point and he treated the . .
Trade Mark: Invalidity – allegation that Mark registered here by person faseley purporting to be the agent of the mark holder in the US. . .
Opposition – existing similar mark . .
Interlocutory Hearing in relation to a request by the Applicant for Security of Costs . .
IPO Trade Mark: Opposition – The application was in respect of ‘Eau de toilette, perfume, deodorant’. The opposition was based on registrations of a number of WITCH marks including WITCH DOCTOR and WITCH STIK.
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 . .
At first instance (see BL O/099/06) the application had failed because the applicants had not provided evidence of use of the mark relied on. Following an appeal to the Appointed Person the matter had been remitted to the Registrar for further . .
Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email
Result
Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its . .
IPO Section 3(6): – Opposition failed.
Section 5(2)(b): – Opposition failed.
Section 5(3): – Opposition failed.
Section 5(4)(a): – Opposition failed.
1. Admission of additional evidence. . .
1. Statement of grounds of opposition : scope of the attack.
2. Amendment of pleadings; inherent jurisdiction to allow.
In dealing with the opposition to this application (see BL O/367/04) the Hearing Officer questioned the scope of the . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(1)(c): – Opposition failed.
Section 3(2)(c): – Not considered.
The opponent in this . .
IPO Sections 1(1) and 3(1)(2) – Opposition failed.
Section 3(1)(b) – Opposition successful.
Section 3(1)(c) – Opposition failed.
Section 1(1)(d) – Opposition failed.
Section 3(2)(c) – Not . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(1)(c): – Opposition failed.
Section 3(2)(c): – Not considered.
The opponent in this . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(2)(c): Not considered.
The opponent in this case is a German manufacturer of confectionary . .
IPO Request for ‘striking out’: – Request refused. – 1. The Hearing Officer concluded that the Agreement between the parties had been reached on the basis of their trading arrangements at that time and there was . .
IPO Revocation. 1. Partial surrender of registration; effective date.
2. Rule 68(7) : failure to file TM8 rectified as a correction of an irregularity in or before the Office.
At the outset of . .
IPO This was an appeal from the Hearing Officer’s decision of 2 April; 2003 (BL O/090/03) in which he decided that the provisions of Rule 13(6) of the Trade Marks Rules 2000 were mandatory and that the . .
PO Trade Marks – Inter Partes Decisions – Opposition – 2211189 . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Trade Marks – Ex Parte Decisions . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
Objection that mark is customary within the trade. . .
IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02). Ms Emanuel appealed to the Appointed Person. Subsequently, . .
IPO Three separate oppositions, not consolidated, but as same issues involved only one decision.
The opponents’ opposition was based on their ownership of registrations in Classes 9, 16, 35, 41 and 42 of . .
IPO Section 46(1)(a): – Revocation failed.
Section 46(1)(b): – Revocation successful.
1. The Hearing Officer had to decide whether watches made of gold and/or incorporating precious stones were items . .
IPO Section 46(1)(a) – Partial Revocation failed
Section 46(1)(b) – Partial Revocation action (partially successful)
The above registered mark was registered for a range of goods in Class 9 and the . .
IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in . .
IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the . .
Section 3(6) – Opposition succeeded
Section 5(2)(b) – Opposition succeeded against the applicants Class 33 application.
Proprietorship: There must be a proprietor in existence at the date of application.
The opponents owned . .
Section 5(2)(b): Opposition partially successful in respect of Class 12 goods. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.
The opponent relied on a number of prior registrations but these . .
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 . .
. .
IPO Opposition based on opponent’s registration of a TWIN CHEF device mark in Class 30. The opposition related to the same application under consideration in SRIS O/186/01, and the opponent relied on largely the . .
IPO Opposition based on opponent’s various registrations (Community and UK) of a TWIN CHEFS device mark in Classes 29, 30 and 32. In regard to opposition under Section 5(2)(b), the Hearing Officer accepted that . .
IPO Appeals to the Appointed Person Decisions – Trade Marks . .
cw Inter Partes Decisions – Trade Marks – Opposition – The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as ‘Pogs’) were sold in the USA . .
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 . .
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
An action was begun opposing a trade mark. It was conducted under the old rules, which did not allow for an order for discovery. After the new rules came into effect, discovery was sought, but the registrar said the old rules would continue to apply . .
IPO The opponent in these proceedings claims to have used the mark ZAM-BUK for ten years prior to the filing of the application in suit. The background to the proceedings is as follows.
ZAM-BUK is a . .
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the . .
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
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 . .
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
IPO The applicants were proprietors of the Community Trade Mark ‘@@XL pharma’, registered in Classes 3, 5, and 42. The Hearing Officer found that the goods were similar. Both marks had a distinctive character. . .
The shape of a bottle, and patterns impressed on it, were insufficiently distinctive to be registerable as Trade Marks. The distinctiveness is assessed by reference to the object alone, not by reference to the marketing activity surrounding it. . .
The test for confusion in Trade Marks context is wider than that for passing off. The use of a name which suggested manufacture in Switzerland when there was no connection with Switzerland, was misleading and deceptive and registration as trade mark . .
Application for registration without evidence of proprietary interest in the name. . .
Lord Diplock said: ‘The common law of trade marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was . .
The court considered the nature of use in relation to goods under the 1994 Act, and the Directive: ‘It may well be that the concept of ‘use in relation to goods’ is different for differing purposes. Much may turn on the public conception of the use. . .
Where a sign or name had been used overwhelmingly with a descriptive or technical function, it was not validly registered as a trade mark. Name used in relevant public as an indicator of type not a designator of origin. . .
An application to register a shape as a trade mark, on the basis of the shape only and without association with any other indication, would fail unless some particular element of the shape was driven by more than the need to produce a technical . .
The defendant alleged that the offence of which had been convicted, under the 1994 Act, infringed his rights under article 6.2 in reversing the burden of proof.
Held: The principle that the duty of proof lay on the prosecution was subject to . .
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
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The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for . .
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 . .
application to quash a forfeiture order made pursuant to s.97 of the Trade Marks Act 1994 . .
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
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
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
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
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
The claimant asseerted infringement of its trade mark, and the defendant replied challenging the validity of the registration. Sales J [2014] EWHC 1963 (Ch) Bailii Trade Marks Act 1994 Intellectual Property Updated: 04 December 2021; Ref: scu.526598
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
Appeal by Shorinji Kempo Unity from a decision of the Hearing Officer. SKU opposed the application of the British Shorinji Kempo Foundation to register the trade mark. Warren J [2014] EWHC 285 (Ch) Bailii Trade Marks Act 1994 Intellectual Property Updated: 29 November 2021; Ref: scu.521393
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
[2005] EWCA Crim 3692 Bailii Trade Marks Act 1994 92 England and Wales Crime Updated: 15 November 2021; Ref: scu.249345
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
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
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
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
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
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
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
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
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
The defendant company used the trade marks of the claimant on their web-site to attract visitors. However the trade marks themselves were not visible when the site was browsed, or when it was listed on the search engine.
Held: The use of a . .
. .
